Thomas A. Edison Papers
at
Rutgers, The State University
endorsed by
National Historical Publications and Records Commission
18 June 1981
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The original documents hi this edition are from the archives at the Edison National Historic Site
at West Orange, New Jersey.
ISBN 0-89093-703-6
THOMAS A. EDISON PAPERS
Robert A. Rosenberg
Director and Editor
Thomas E. Jeffrey
Associate Director and Coeditor
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Managing Editor, Book Edition
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Assistant Director for Administration
Associate Editors
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Assistant Editors
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Secretary
Grace Kurkowskl
Amy Cohen
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Student Assistants
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BOARD OF SPONSORS
Rutgers, The State University of New National Pork Service
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EDITORIAL ADVISORY BOARD
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FINANCIAL CONTRIBUTORS
PRIVATE FOUNDATIONS
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Humanities
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Records Commission
PRIVATE CORPORATIONS AND INDIVIDUALS
Alabama Power Company
Anonymous
AT&T
Atlantic Electric
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Companies
Battelle Memorial Institute
The Boston Edison Foundation
Cabot Corporation Foundation, Inc.
Carolina Power & Light Company
Consolidated Edison Company of New
York, Inc.
Consumers Power Company
Cooper Industries
Corning Incorporated
Duke Power Company
Entergy Corporation (Middle South
Electric System)
Exxon Corporation
Florida Power & Li$it Company
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Gould Inc. Foundation
Gulf States Utilities Company
David and Nina Heitz
Hess Foundation, Inc.
Idaho Power Company
IMO Industries
International Brotherhood of Electrical
Workers
Mr. and Mrs. Stanley H. Katz
Matsushita Electric Industrial Co., Ltd.
Midwest Resources, Inc.
Minnesota Power
New Jersey Bell
New York State Electric & Gas
Corporation
North American Philips Corporation
Philadelphia Electric Company
Philips Limiting B.V.
Public Service Electric and Gas Company
RCA Corporation
Robert Bosch GmbH
Rochester Gas and Electric Corporation
San Diego Gas and Electric
Savamiah Electric and Power Company
Schering-Plough Foundation
Texas Utilities Company
Thomas & Betts Corporation
Thomson Grand Public
Transamerica Delaval Inc.
Westinghouse Foundation
Wisconsin Public Service Corporation
225
A Note on the Sources
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available. Every technical
effort possible has been
made to ensure legibility.
PUBLICATION AND MICROFILM
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research.
Legal Department Records
Phonograph - Case Files
Thomas A. Edison v. Frederic M. Prescott
This folder contains material pertaining to the suit brought by Edison
against Frederic M. Prescott in the New Jersey Court of Chancery. The case
was initiated in June 1 899 and involved Prescott's misrepresentation of himself
as Edison's agent. It was a companion suit to Edison Phonograph Company
v. Frederic M. Prescott, which involved infringement of Edison's U.S. Patents
386,974 and 393,466. The selected items include Edison's bill of complaint;
Prescott's answer, which bears Edison's marginalia; an affidavit by Edison; and
correspondence regarding the suit. Among the documents not selected are
items pertaining to other legal actions against Prescott.
NATIONAL PHONOGRAPH CO.,
EDISON LABORATORY,
ORANGE, N. J.
v March 13, 1899.
Howard W. Hayes, Esq.,
Prudential Building,
Newark, N. J.
Dear Sir:
You will remember our writing to the Postmaster, New York City
I now enclose you a copy of his reply to Mr. Edison. There is no
doubt that we have got to prosecute Mr. Prescott if it is our intention
to make him desist from using Mr. Edison's name in his business. As
I have already stated, he has on his door the following: "P. M. Prescott
Successor to Edison Phonograph Agency". Is there no way in which this
can be eliminated?
weg/ivav
General Manager.
[ENCLOSURE]
NATIONAL PHONOGRAPH CO.,
EDISON LABORATORY,
ORANGE, N. J.
j (COPY)
March '.':9th, 1899.
Mr. Thomas A. Edison,
Orange, N. J.
My dear Sir:
I duly received your favor of the 28th ultimo, in regard
to business carried on at 44 Broad Street, this city, by Mr. E. M.
Prescott, under the title of "Edison Phonograph Agency", and advising' me
that Mr. Prssoott has no authority to use the above mentioned title,
and requesting that all the mail received at this office directed as
above described should be delivered to the National Phonograph Co. at
Broadway and 26th Street, New York.
In reply I have to say that Mr. Prescott has furnished me with a
written statement in regard to his use of the above named title, by
which it appears that he was engaged in business during 1897 under the:
name of "Edison Phonograph Agency", by and with the consent of the
Manager of the National Phonograph Co.; that about May, 1898, he entered
into co-partnership with one C. E. Stevens to continue business under
th“ sawe title at the same address, 44 Broad Street, N. Y., that
subsequently the co-partnership was dissolved and by mutual consent
Mr. Prescott was to liquidate the affairs of the defunct Agency; that
he is so engaged at'ttfe present time; that he is not now advertising or
using and has not advertised under or used the title "Edison Phonograph
Agency" since the dossolution of the co-partnership, and that the only ‘
business now carried on under that name is such as relates to the former
business of the Agency. He also advises me that he would be unable. to
successfully terminate or wind-up the affairs of the Agency should the
[ENCLOSURE]
NATIONAL PHONOGRAPH CO.,
*■' EDISON LABORATORY,
ORANGE, N. J.
T.X.K. (2) 3/9/99.
mail so addressed be diverted from him and he desires such mail delivered
to him as formerly. I have accordingly directed that all mail directed
to the Edison Phonograph Agency shall be delivered as formerly at 44
Broad St., in accordance with the regulations of the Post Office Depart¬
ment. You have, however, recourse to the courts to test the right or
authority of Mr. Prescott to the alleged unauthorized use of the name
"Edison" in connection with his business, and should you succe ed in re
straining him by injunction or otherwise from the use of the name
"Edison", the order of the Court will he respected at this office.
I am,
Very respectfully,
C. Van Cott,
Postmaster.
U'O fci:0 0110 i )1(! A!
iri c!uwcisi«‘ OPlJKfTERaEnr; " •
radar i'.HcOJll, • Chancellor
Humbly coMipl-v.jnh'V'' shows unto your Honor your
orator ' 'fhonae A. Edison of the of root Grange, in
the County of Sisde:: " -a* "’e-v Jersey, that your
raanuf.-ictur •; of varr our inverted i.'y Him, ansi Jn
the manufacture of various. comma re.ial ar tides toy the use
of machinery and mo thodu • invented by him; that.. ho has
taken out numerous patents in'- the-'. Uni ted States and othor
Countries, oj the . world, : and is well-known throughout tho
business, and scientific /world’, .that ajatmjs &l* othor in¬
ventions, lie Inverted tho phonograph,’ a- machine for ro-
COrdi:v: and reproducirv: sound, and took out. patents for
tho n 3d invention in the year 3071?, ooth in tho United
States and eUior countries throughout tho world; that
since that time Ut* has continued experimenting in regard
to the said invention and 'ha s invented many improvements
thereon, 'and has taken out a large number o? patents for
such improvements in tho Unit-id States and tho other
countries of- the world; that on account of hi a numerous
inventions ami hi :: reputation in the business and scien¬
tific world, the use of his name in connection with any
manufactured article greatly enhances. the value of that
article in tho popular mind; that the slid patents taken
out by bin covering inventions in regard to tho phonograph
either owned by : him personally ;or' by corporati ons
2,
which ho has organised for t.ho purpose of manufacture and
solline the phonograph and materials and supplies connect¬
ed with it; that he is the owner of a majority of the
capital stock in all said corporations, and therefore
either owns absolutely or owns a majority interest in all
of said patents and of the companies or corporations en¬
gaged in the manufacture of said articles; that the
business of manufacturing and soiling phonographs and sup¬
plies therofor is a very largo and profitable business,
and is increasing daily, and that your orator derives
large profits for the same; that he is engaged to a largo
extent in hi 3 laboratory at VteGt Orange in experimenting
in connection with the phonograph and improvements there¬
for, and also has in his employ a largo number of men who
are engaged in the same occupation; that a largo part of
the value of r.ho business of soiling phonographs and sup¬
plies therefor consists in the use of your orator's name
in connection therewith, and that said phonographs and
supplies are to a large extent purchased by the public
because they hro known to be inventions of your orator,
and are manufactured by your orator or the said companies
and corporations identified with and controlled by your
orator.
^ And your orator further shows that he formerly
maintained an office in the Edison Building on Broad st¬
reet in How York City and mai ntainod it there from the
year 1891 until the latter part of tho year 1898; that
about the year eighteen hundred and ninety-five one Fro-
doric M. Prescott of the Township of Montclair in, the Counjr
of Essex in this State, became engaged in the business of
buying and soiling phonographs and supplies therefor; that
said business was at first carried on by the said Prescott
a3 your orator is in informed, simply as a broker, but
that afterwards, somewhere about the year eighteen hundred
and ninety-seven or the early part of the year eighteen
hundred and ninety-eight, the said Prescott started in
business on a larger scale and securod rooms in the said
Edison Building and advertised himself as “Edison Phono¬
graph Agency; “ that the 3eleotion of the said Edison
Building for his office and the use of the term “Edison
Phonograph Agency" was made by him to enable him to get
hold of letters or telegrams that might be .sent to your
orator addressed at his said vms ,-g office in said build¬
ing, and to intercept persons who might call at said
building to inquire for your orator; that your orator
became aware that the said Prescott was pursuing that
course of conduct, and opening letters and telegrams ad¬
dressed to your orator in the summer or fall of the year
eighteen hundred arid ninety-eight, and about that time
your orator also found that the said Prescott was repres¬
enting himself by mail to various persons as being your
orator's agent, and by means Of that was attempting to de¬
fraud such porsons; that youi* orator in the month of Oc¬
tober, eighteen hundred and ninety -eight received a letter
from Jesus Riora' of Ybor City, Florida, complaining that
tho said Riora had sent to the said Prescott some money
for an automatic speaker, which is a part of a phonograph, j)
and had not received it from him, and that also that, one
Padorico Arnavat had sent on order of 070.00 to your
orator for phonograph and supplies, and had not received
ddroasod "Mr. Thomas A. Edison, Xe\? York", and was for
orator
annexed to
Sa^L-ctw-fc. £
; tor further shows that f>n the thirty.
And your
one corner of
orator
Phonograph
U. 3. A, ") onclos-
Agency, Ed:
foil!
‘lios. A.BdiiJO!
Hovr York.
Is ay lottor not worth a reply. Answer quick.
l{.3»Roykjalin.
. 1354PM . "
fr(, lO^efc. •CdU.'tfiA**-*- U. om^C^m-cX fS Ot-tku^cU. fe^A i£jtA,
That said Pro3cott afte nrardB informed your orator that 1
had opened the envelope containing said telegram and for.
warded the telegram to your orator. And your orator
charges retd that the said Prescott, opened oaitl envelope
with the idea that if contained a telegram, In connection .
with the ealo of phonogivjpha and that the said Prescott
haa opened other telegrams to your orator of, which your
orator has no knowledge; that the said No. 44 Broad Street
i s the street number of the -.aid Edison Building in which
And your orator further shows that on the twenty-
:;htoen hundred
ninety -eight
'Edison Phdnograph
•Manufacture
York maint<
•d complains that th;
?l . Samuels , liad ordered and
i ode from
your ora-
nufactu
id to and made part of this bill.
And your Orator further shows that after reoeiv-
o the said Prescott stating that, he, the said Prescott.
mst disconti;
orator's nano in
connection with his business, and from holding himself
cut to bo your orator's agent; that the said Prescott
wrote to your orator in reply stating that he was just
winding up hi 3 business and would close it up before the
end of the yoar, and then would discontinue
your orator's name; that your orator in order to ayoi.d
the trouble and oxponso of litigation, and thinking .that.
no further injury would accrue to your oratoi
taka stops to compel the Said Prescott to at once 'discon-
I":- 'f
-4 - — — — - - . .L_,
6. ,
tinuo the use of your orator's nano and from advertising
himself as your orator's agent. Copies of the said let-
are annexed to and made part of this tin cu^ot
v* *dt c£C*'rL£*f ,
And. your orator further shows that the said
Prescott instead of discontinuing the use of your orator’s
name as aforesaid after the first of January, eighteen
hundred and ninety-nine, still continued his said business
under the name " P.M. Prescott, auccossor to Edison Pho- .
nograph Agency, 11 and continued and still continues to
hold himself out as your orator ' a agmt in connection with
t!v; business of sell ing phonographs and supplies therefor
and continued and still continues to deceive and defraud
the public toy that means.
And your orator further shows that the said
Prescott i s now sending out catalogues of phonograph re- ;
cords and supplies in the Spanish language ip which lie
advertises himself as the "Edison Phonograph Agency;" and
j your orator has annexed to this bill and made a part there¬
of copies of two such circulars issued by him, marked
Schedules "p" and "&,r respectively and makes them part of
this bill.
And your orator further shorn; that on the twenty-
third day of February, eighteen hundred and 'ninety -nine
tlio National Phonograph Company, a corporation of this
stare, engaged in the business of soiling phonoi.-railis and
supplies, received a letter from one V/.T.Hays of Wayfioaburg
Pa., complaining that the said Frodorio M.Prescott had'1
. _ _ _
i
¥'l - " i ’ ,* ' ... /' i
6
1
pj
■ j
1
— . mi iiirtittMi
*zr~f£~ Terr’S — — - =s3i _ -lir --. .
7.
received raonoy from the sa:id Hays for phonographic goods
md had failed to 'sand the goods, and your orator has an-
hexed
•ator furth
the tarenty-
ighth day of Pobruary, oigli
Ci ty should
name on from bt
delivorod to the
rour orati
rour orator
ill mail address-
Edison Phonograph Agency delivered to him, and
therefore would have to. deliv-
And your orator has annexed
corresponded
eighteen hundred and ninety ^nine ho ro-
Stevens, a man engag<
of How York in selling phonographs and supplies therefor (
letter'* from one R. A. Cousins of (reorgotoim,..Demorara*
stating that in December, eighteen hundred md ninety-eight
he had sent rone money to the sal a Prescott for a St £
Phonograph rind' in reply the said Prescott said chat ho
'ould send him instead a Qraphophono , and that no machine
or money hadboon r .Tier nod-' to him by said Prescott;
shows that the machine
riachino for
reproducing sound called. a Graphophono.and
rocori
'Inferior, mach:
the phonograph
under your
orator's patents and in many essential particulars il
c over. id; by; .your, orator 1 s patent!
td graphophono is injurious to your orator's busi-
And your orator charges and insists that the
aid Frederic M. Prescott is unlawfully using your orator's
and is inducing
the public to tool:
that he, the said Prescott, is an
agent of your orator, and that by
living money from the
it furnishing th
roods
not personally aci
iuaint<
In tender consideration whereof.
.much
your orrior'io remediless in and by the strict rules of-
law and can find relief only in this court
That the said Frederic M.Pr
»nd perfoci
make
without oath
(answer under oath being expressly
.That the; Bald defendant";
may b‘e restrained fr<
ing your orator's name in con-
noction -with tho said bUBinoso carried on Aand from adver¬
tising or holding out himself as an agent of your orator,
oiMnaiC way connected with your orator In business, and
A
from receiving or opening any letters, telegrams or pos¬
tal cards addressed to your orator or haying your orator's
3. That tho said defendant, Frederic ?, I. Prescott,
may be decreed to account for and pay over to your oi’afcor
the income and profits unlawfully derived by him from tho
3aidAJ^souof your orator's name, and also the damages your
orator has sustained by reason of tho unlawful acts of the
4. That your orator may have such further or other .
relief as the necessity cf the case may require, and may
be agreeable to equity and good conscience.
May it please your Honor tho promises considered
to grant unto your orator a writ: or writ of injunction is¬
sued out of and under the seal- of thin Honorable Court,
restraining the oaid defendant a 3 above prayed for, and
a loo the state's writ of nubpoona to too dims tod to the
said defendant, ioauod out of and under th<
this honorable Court to answer ttiis bili'O" “
a vi rt +n f n Abide bv and narfom
to your. Honor shall
quity and' good
State of How Jerseys
:SS
County of Essex ;
rorn according to la \r on his oath says: I
!:o i ng bill of complain!
road the nmo and the facts therein set forth are true.
The copios of letters, telegram and postal card annexed
thereto are true copies of the originals son t^^mo^ or
which are in jrty possession. I am an inventor by profes¬
sion and cxi engaged in the manufacture of various artiolos
invented by mo in the manufacture of various commercial
artiolos by use of machinery and methods invented by i
I have taken out numerous patents in the United statei
and other countries of the world, and am well known through
out the business and scientific world. Among my other,
inventions I invented the phonograph a machine for record¬
ing and reproducing sound, and took
patents for that
nvontion in the year 1870, both in the United ntates and
in other cotint]
Since that time I have continually
xporiraented in improving the said i:
made
many improvomonts thereon, and have t<
number of patents for ouch
into in the United
States anti other countries. On account of my numerous
inventions and ray reputation in the business and scientd.fi
world, and the high class workmanship of the articles
manufactured by the manufacturing establishments with
wJiich I am connected, the uso of ny name in connection
with any manufactured article greatly enhances the value
of 'that article an the popular mind. The patents taken :
out by meA0ovoring inventions connected with the phonograp
and its accessories, are'-oithor owned by me personally or
by corporations which, I have organised for tho purpose of
manufacturing: and exploiting tho phonograph and its acces¬
sories. I own or control a majority of tho stock of all
those corporations. business of manufacturi ng arid
selling phonographs and supplies therefor is a large and
profitable business, and is increasing all the time, and I
'derive large profits from it. I am engaged from time to
tine in my laboratory in \7oot Orange in making experiments
f or the improvement of the phonograph, and have in ny em¬
ploy a largo numb.-
cupa
part
e ounce
purchased' bj
public to
extent bccnuco they
nufactured by
;ions
the comp;
connected.
There
anufactured
•.old which record
reproduce hum;
other ■ sounds.
ini'srior in all respects to the machine invented by
and in many essential characteristics they are covered by
my patents. They are, however, sold in competition with
phonographs. X 1 maintained a personal office in the
Edison building ho. 4-4. Broad direct in the City of Now • ’ '■
York from about the year 1891 up to the latter part of the
year 1098, bur, have not used it since that time. On-ac-v;
court of’ the name if that building and of my office form-;
only being there, it is generally supposed to be any vsad~
“4' fic-
quarters, andAthe place where letters or telegrams intendr
3.
Frederic M.Proscott, who I understand lives in Montclair
S&JCL
Township, in this wont into the business of buying
and soiling phonographs and supplies therefor, purchasing
them from companies who' sold or manufactured them. They
of course, all come originally from the Company that manu¬
factured them, which is controlled by mo. At first (so
far as. I can learn) Prescott carried on the business sim¬
ply as a broker, but afterwards, somewhere about the year
13P7 or the early part of the year 1093, lio started in the
business on a larger scale and rented rooms in ttio.-s.ald
Edison Building, and advertised himself as "Edison Phono¬
graph Agency. " I understand that he selected the said
Edison Building for his office and used that narr'td^eh-
ablo him to got Isold of letters or telegrams that might,
bo sent to me and addressed to me at my .f&r.-.ntr office in
that building, and in order that ho might get the trade of
persons who might call at that building trying to see me j
and that ho might better pass himself off as connected in
business with me. I became aware that Prescott was pur¬
suing that course of conduct x and was oponing letters and
,, telegrams addressed to me, sometime in the summer or fall
of 1090, and about that • ime I also found that tho said
Prescott was representing himself by mail' to various per¬
sons as being my agent, on d by tiat wer.no apparently was
attempting to defraud such persons. In tho month of Oct¬
ober, 1098 I received a letter from Janus Riera, of Ybor ,',vj
City, Florida, a copy of which is annexed to the foregoing
bill, and on or about tho thirty-first day of October of
the same year Inreceivod an onvolopo by mail from. Hew
/ • ■■■’ • ^
York addressed to me with Prescott’s return address on
t ho corner, containing a telegram, a copy of which is sot
forth in the foregoing bill. Prescott afterwards inf or ra¬
th at; he had opened the envelope enclosing the tolo.
and had forwarded the telegram to
On the twenty.
November I received
"nl card adds
to the Ed.i son Phonograph Agency
delivered at the
N ational Phonograph Company
rhieh I am interested,
V of which is annexed to the
After 1 learn ed from thi s letter and thepik,
telegram the course that Prescott was
suing, I wrote him tolling him he must discontinue at once.
in connection with his busi he i
received word from him that he would do so shortly. 'r:A:
rapy of my correspondence with him in regard to this if
annexed to the foregoing bill. I did
action against him, as I presumed that this conduct on
his part would, soon stop. I understand, however; that
said Prescott' after the first of January, 1B99 continued
his business under the name of "F.M.Proscott, successor to
Edison Phonograph Agency, " and continued to hold himself X
out as my agent in his business. The letter from W.
annexed to the foregoing bill is ore received, blithe
ional Phonograph Company. In order to stop'tho ar>ri<
of his use of my name and tho injury to my business 1
his business methods, I corresponded with the postal
thoritioo in Hew York, endeavoring to got them to doi
to joiO lot tors intended for mo which he received, but
unable in that way to effect tho purpose I .intended. On
account I am compelled to take lof:al moasures to
prevent thin unauthorised and injurious use .of my name by
tho said Prescott. I have delayed go infv to the expense
and trouble of ta in a lo;;al action in tho hope that my'
purpose could be accomplished in other vra ys.
Sworn to and sub scribed :
[ATTACHMENT]
'•THE EDISON PHONOGRAPH AGENCY
P.M. Prescott Manager. (Phonographs,
Edison Building, (Records,
44 Broad St., (Projectoscopes,
Hew York, N.Y. (Original films,
Cable address: Thomas A.Edisons (Kinnto3copes,
"Puso, Nov/ York" . (KInetophones,
A1.A.B.0, Commercial, Tidobers, (X Ray Apparatus,
Huntings, and Private Code used. (Pan motors, .
Telephone "1510 Broad." (Lalande Battories&C
(Electro Dental,
(Electro Surgical.
Hew York, Dec. 12th, 1898.
Mr. Thomas A. Edison,
Edison, N.J.
Dear Sir:-
Your favor of Dec. 8th. received and carefully noted.
You must bo misinformed that I am advertising myself as your
agent, as I do not remember ever having done so. I styled
myself while in partnership with Mr. Stevens, as "Edison Pho¬
nograph Agency", and am obliged to continue the use of that
name on ny lottor-heads and office door so long the Edison
Phonograph Agency liquidation is in progress, as I am still
soiling Edison phonographs, the use of the name cannot be
injurious to your interest. I, howevor, have no desire to
use your name in connection with the Edison Phonograph
Agency longer than is absolutely necessary to liquidate such
Agency, as I find I can sell more goods on my ora namo than
under any other, and I propose, in the future, to advertise
"P.M. Prescott" . I am only sorry that I did not come to
this conclusion years ago. My sales for November wore
§17,164. I believe the Edison Mfg. Co. received about §1200
of this amount while the National Phonograph Co.roeeived
no thing. ®iis month, and from now on, none of your in¬
terests will receive directly any orders of mine.
[ATTACHMENT]
j 2.
2.
Mr. Thomas A. Edison.
j I am awar o that Mr. Stevens* business is increasing
slightly, but I am confident, with all the protection and
the baching you and Hr. Gilmore may give him, that it will
never amount to what I am able to do. It seems to me that
you are paying pretty dearly for endeavoring to establish
Mr. Stevens in the business, but so long as you are satis¬
fied, I have nothing to complain of. If you live long
enough, soim day, I think, you will be convinced of the truth
of the statements I have boon trying; to impress upon you.
Mr. Gilmore has stated to you and has circulated the story
to the trade that I have b eon cut off from receiving your
goods because I cut prices; but you know and I know that
the only prices I have cut have been to follow Stevens' lead
and endeavor to meet his competition, and although Ivir. Ste¬
vens still continues to cut prices and offer phonographs at
the ridiculous discount of 46#, at xrtiich quotation I could
not possibly sell, his supply is not cut off, doing the same
thing that, I have been accused of. The real reason that- 1
iras cut off X7as that Stevens might succeed and the trade is
thoroughly aware of that fact to his discredit and to your,
discredit.
I have written this long letter as I know you do not
xave time to go into details and whatever Mr. Gilmore and
>thers tell you, you take for the Gospel without hearing
bhe other side of the story.
Very truly yours.
(Signed) -F.M.Prescott.
[ATTACHMENT!
Dec. 33rd, 1893.
E.M.Prescott, Esq.,
44. Broad Street,
New Yorlt,
Dear Sir:-
I am in roceipt of your letter of the 13th. inst..
and shall absolutely insist on your discontinuing the use
of ny name in any way in connection with your business.
You have not and never havo had the least right to use it.
I have instructed my counsel to prepare papers ir
the matter, and unless its use is entirely discontinued
within ten days from the date hereof, legal action will be
taken against you.
Yours very truly,
Thomas A. Edison.
[ATTACHMENT!
THE EDISON PHONOGRAPH AGENCY,
F.M. Prescott, Manager .
Edison Building,
4 4 Broad St.,
j Now York, N.Y.
( Phonographs,
(Records,
(Projoctoscopos,
(Original flams
(Kinetoscopes,
Cable Addross: Thomas A.EaiBon3(Kinotophone3V
“FuBe New York," (X Ray Apparatus,
A1,A.B.C, Commercial, Liebera, (Pan Motors,
Huntings, and Private code used. (Jjalando Batteries fee
Telephone "1510 Broad" . (Electro Denrai,
(Electro Surgical.
(
I Now York, 27 December, 1898.
Mr. Thomas A.Edison,
Orange , II. J.
I have your favor of the 23rd. Inst. , and carefully
noted. Although you admitted to Era last Septombor that
there was no reason why I should not use your name and that
you could not stop mo from using it if you wan to d to, I will
see that your request is complied with.
An associate of the house of Messrs. Pathe Freres of Paris,
the largest firm in Europe in tho projoctoscope, film and
talking machine line, is in Not? York, malting his headquar¬
ters with me. He has brought over samples of films of his
house, also samples of the blanks they are making in Prance.
Of com* 30 he could not do ary phonograph business with you,
but ho would like to moot you to talk ov or the film business,
whereby you could soUAfi&ms in America, or exchange nega¬
tives with him, ho manufacturing Edison films in Franco from
your original Edison negatives and you manufacturing Patho
films in Orange from original Patho negatives.
If you or Mr.Qllmwo can spare a few minutes I should
be pleased to bring out to Orange this gentleman at your
c onveni ehoe . Ho is returning to Paris on January 7th., so
if you will grant him tho favor of an infc rviow it must be
before that date.
Awaiting your pleasure, I am,
/-YourSvy o ry/t i*u ly ,
F?M. Prescott.
[ATTACHMENT]
Josus Riera
Grocer,
First Class Cuban Coffee .
Ybor City.
Tampa, 10/22/98.
Mr. Thomas A. Edison,
1 havo written a letter to your Mr. Prescott in
answer to his of the 27th. instant, and he acknowledged re¬
ceipt of $5.78 which 1 remitted, in order to obtain one
automatic speaker which he says has send same to me, but I
have not received it yet. Ho has not answered my letter.
I don't know why, therefore 1 address this one to you in
order that you may see about it. X have soon our Post¬
master of ffirmpa, and nothing has come for mo. For the above
amount ho was to sond also one long flexible connection,
and ho says in his letter has sent it, also not rocoived.
Mr. Federico Arnavat has also sent you an order of
seventy dollars, and I have $19.40— in this amount and has
never received any answer or the goods, and Arnavat wrote
this letter on the 26th. last month. I wish to say to you
that I would like very much to do business with you, and as
I am going to Cuba very soon, I will be able to introduce
your goods, and I want you to be square with me.
I am in hope of receiving a prompt answer, and I
10th. Ave. 1617
Ybor City,
Floddua.
( Signod) Josus Riora
[ATTACHMENT!
Waynosteirg, Pa. , Fob. 28, 1099.
National Phonograph Co.
Gent ! -
Somotimn in Jan I 'sent $11.80/100 (cloven dollars
and 80/100) to F.M.Proscott, 44 Broad St., Edison Building
for phonographic goods . On Jan 25 ho receipted for the
money saying goods would be shipped promptly. Not tearing
further on Fob . 2nd . I wrote and again on Feb 15 wrote to him
but can tear nothing from him and never received the goods.
He sent me your Catalogue with his name printed on as agent
and also quite a lot of other advertising matter all in good
shape. i have bought of Hawthorne & Sheble since Nov. 1st.
fano Phonographs and over two hundred dollars worth of
Phonographic goods and sent this sample order to Prescott
as he advertised some special records. ;*
Re spot.
Signed 17. T. Hays '
Box 134.
[ATTACHMENT!
C ornolitjs Van Cott, Esq.,
Postmaster,
Hew York City, H.Y.
Dear Sir:-
attention 1138 recently boon called to the fact
that one F.M.Presoott, Edison Building, 44 Broad St., Now
York, has boon circularizing and advertising throughout
this and other countries that ho is my agent for the sale
of phonographs, records, etc. etc. The young man did some¬
time ago handle some of tho products of my different estab¬
lishments, but his business methods were so loose that wo
wero compelled to cut him off entirely. IIo formerly oper¬
ated under tho name of "Edison Phonograph Agency", but had
no right whatever to use tho name, never having boon author¬
ized to do so by mo or any of icy representatives. I have
recently receivod some letters from foreign' countrios call¬
ing my attention to the fact that people who sent him monies
had received nothing in return for them, and one of the
parties who has written mo advised that he had written tho
Chief of Police of New York City to look into tho matter.
I consider that the young man is using tho mails to further
his own ends and to hurt my very good reputation. I would
like to know from you if it is not possible for you to ar¬
range to divert all mall addressed to tho "Edison Phonograph
Agency , New York, to tho Company who has the right from mo
to handle the phonograph business; this Company is the
National Phonograph Co., 26th. St. & Broadway, Hew York. 1
feel satisfied that this man Prescott i3 injuring my busi¬
ness very materially, and it is absolutely imperative that
I take steps at once to estop him from using my name in tho
conduct of his business. I understand that ho now adver¬
tises himself as "P.H.Proscott, Successor to the Edison P3’o-
nograph Agency".
I have recently had occasion to bring to tho notice of
the Postal Author ities in Chicago tho fact that a party by
t ho ^ name of Hensohel, operating as tho “ Edison Phonograph
Co. has been using my name in connection with his business,
although he novor purchased from my interests or ryself.
I want to see if someth ing cannot bo done towards suppressing
tho business in Hew York City also, and I must of course
havo the co-opcration of your Department in order to accom¬
plish this object. I Should be very pleased to have any
sugg3 st ions that you may havo to offer and I can assure you
that I will havo my counsel take the matter up vigorously
but I feel that it is necessary that I sliould have your co¬
operation before anylfc-.ing ±h Haim can bo done.
I shall be very pleased to le ar from you as to this
matter at your convenience.
Vows very truly,
(Signed) THOMAS A.EDlSON.
I P?S? To give you an idea of what this party is doing, I en-
eioso a letter that has been received by one of my Companies
the National Phonograph Co. ,26th.St.& Broadway, New York
from W.T.Hays, Waynosburg, Pa., dated Neb. 22nd. Will you’
kindly return this to me when you are through with it /as
if I am compelled to bring suit against this gentleman I
shali of course require this loth r f or use in connection
with same.
[ATTACHMENT]
Mr . Ehomas A. Edison,
Orange, N. J.
Mgr dear Sir:-
I duly received your favor of the 28th. ultimo,
in regard to business carried on at 44 Broad street, this
City, by Tar.F.M.Proscott, under the title of "Edison Phono¬
graph Agency", and advising mo that Mr. Prescott has no au¬
thority to use the above mentioned title, and requesting
that all the mail received at this office directed as above
described Should bo delivered to the National Phonograph Co
at Broadway and 26th. Street, New York.
In reply I have to say that Mr. Prescott Ins furnished
me with a written statement in regard to his U3e of the
above named title, by which it appears that he was engaged
in business during 1097 under the name of "Edison Phono¬
graph Agonby", by and with the consent of the Manager of the
National Phonograph Co.; that about May, 1898, he entered
into co-partnership with one C.E. Stevens to continue busi-
mess under the some title and at the same address, 44 Broad
Street, N.Y. , th t subsequently the co-partnership was dis¬
solved and by mutual consent Mr. Prescott was to liquidate
the. affairs of the defunct Agency; that he is so engaged
at the present time; that ho is not now advertising or
using ani has not advertised under or used the title "Edison
Phonograph Agency" sinco the dissolution of the co-partner¬
ship, and that the only business now carried on under that
name is , such as relate to the former business of the Agency.
Ho also advises mo that he would be unable to successfully
terminate or wind up the affairs of the Agency should the
mail so addressed be diverted from him and ho desires such
mail delivered to Mm as formerly. I have accordingly di¬
rected that all mail directed to the Edison Phonograph
Agency si -.oil be delivered, as formerly at 44 Broad St., in
accordance with the regulations of the' Pose Office Depart¬
ment. You have, however, recourse to the courts to tost
the right or authority of Mr. Prescott to the alleged unau¬
thorized use of the name "Edison" in connection with his
business, and should you succeed in restraining him by in¬
junction or otherwise from the use of the name "Edison"
the order of the Court will be respected at this office!
I am.
Very respectfully,
C.Van Cott,
, Postmaster.
[ATTACHMENT!
Georgetown, Dcnorara,
C/o General Post Office,
April 17th. ,1099.
wish to place before you, which
getting through,
some time in December, sending
for a Stoddard. He wrote mo
acknowledging the money and mentioned that the standard
could not be sent, but would 3ond mo an Eagle instead. I
replied that although I am not in favor of the Graphophone,
I would have to be contented with it; but up to this date,
I have not h ard one word from him and it is now close on
4 months. These sort of doings bring Mr. Edison's business
to disrepute, having unreliable men as agents. I do not in¬
tend to lot this matter drop. If I can do nothing else, I
would let it be known through public print, to shield honest
men from such a trap. Thi3 order I would have sent you
through Elias of 7 Lombard Street, but I got your lette r of
advice too late.
I am Sir,
Your3 respectfully,
R.A.Couzins.
P.3. If anything can be done, please send mo the Gem $7,60,
1 doz. records §5.00 I shall bo thankful to you by so doing,
You know money is not easily got and to bo swindled out of
hard cash is too bad.
C. E. Stevens, Esq.
Dear Sir:-
This is a matter I
perhaps you can assist me in
I wrote to E.M. Prescott
him a small order for §13.05
[ATTACHMENT]
Galveston, Texas, ll/2l/98.
Dear Sir:-
Tho Klnetoscopo you shipped ran was not an Edisons
which I expocted and it is an imposition on your part if
you do not refund mo the Express charges which the Express
Co. withholds from me out of the 5.00 I deposited with
them here as a guarantee to you that I would accept the
above. It is unjust for you to expect me to accept what I
dicl not order. I had confidence that Edison would not
turn out something unless it was good & that you shipped me
was a Washingtons Firms goods whoso name was on the same
with whom I corresponded with & would not order from'& the
same is no good & not in complete condition I am to angry to
write more having been imposed upon by you as above I take
i t as a cheap lesson that I will never order again without
p rivals dge of inspection before paying anything.
Yours truly,
A. W. Samuels. -
Postal Card Addressed to-
The Edison Phonograph Agency,
Mr. F.M.Prescot, Mgr.,
How York, H.Y.
[ATTACHMENT!
WESTERN UNION TELEGRAPH COMPANY,
21,000 offices in America.
Cable service to all the world.
Received at the T/estern Union Building, 195 Broadway, N.Y.
5 SEX DM EP COPY BR 9 Paid.
GRAND FORJCS HD Oct 29-98.
TH08. A. EDISON,
44 BROAD ST. ,
NEW YORK.
IS IiY BETTER HOT V/ORTH A REPLY ANSWER QUICK.
H.S.REVKJALIN.
125 4PM.
(stomped with rubber stamp over the face of the telegram J
"RECEIVED PROM 16 BROAD STREET"
[ATTACHMENT]
State of Now Jersey:
• as
County of Essex ;
WILLIAM E. GILMORE being: duly sworn
according to law on his oath says; I din the General Manager
of the Edison Phonograph Works and am entirely familiar with
fitx.
the phonograph business, and have been so for^-aany- years .
I am acquainted with Frederic M. Prescott. In the year
eighteen hundred and ninety-eight he did business in the
Edison Building No. 44 Broad Street in the Ci1$f of New York,
and the name on the door of his office was “The Edison Pho¬
nograph Agency, P.M. Prescott, Manager*. Since about the
first of January, eighteen hundred and ninety-nine he has
changed that, and the sign now is "P.M. Prescott, Successor
to the Edison Phonograph Agency*. He still carries on
business under that name.
Sworn to and subscribed :
Of Tu-O-y A.D. , 1899 J
at west Orange, N. S. •
[ATTACHMENT!
IN CHANCERY OF NEW JERSEY.
J between-
THOMAS A. EDISON,
| Complainant ,
i -AND-
FREDERICK M. PRESCOTT,
[ Defendant.
j The answer of Frederick M. Prescott to the Bill of
Complaint of Thomas A. Edison, Complainant.
This defendant for answer to said Bill, or to so
much thereof as he is advised it is material or necessary
for him to make answer unto, answering says:
First: This defendant admits that the. complainant i
is an inventor by profession, and is engaged in the manu¬
facture of various articles, and has taken out patents in
the United states and other countries, and is well known
throughout the business and the scientific world, as stat¬
ed in said Bill. He believes that the said complainant
invented the phonograph, a machine for recording and re¬
producing sound, and believes that the complainant took
out a patent for the said invention in the United states,
and perhaps in other countries. He believes that the •
complainant has invented many improvements .thereon, and
has taken out patents for such improvements; : but whether
the number was large or not, the defendant does not know
and cannot answer as .to his belief or otherwise. This
defendant does not know whether the use of the complain¬
ant's name in connection with any manufactured article
ON BIU & C.
ANSWER.
2.
enhances the value of that article in the popular mind,
and he does not know whether the patents taken out by the
complainant covering inventions in regard to the phono¬
graph are owned by him personally or whether by corpora¬
tions he has organized for the purpose of manufacturing
and selling the phohograph and materials and supplies
^conneetgdjri th it^^yghis defendant denies that the com¬
plainant is owner of the majority of the capital stock of
said corporations. He admits that the business of manu¬
facturing and selling phonographs and supplies' therefor
is a large and profitable business, and he beliewes it is
increasing daily; but does not know whether the complain¬
ant derives large profits from the same, and leaves the
complainant to make such proof thereof as he may be ad¬
vised or may be able to make.
This defendant does not know to what extent, if at all,
the complainant is engaged in his laboratory at West
Orange in experimenting with the phonographs and improve¬
ments thereon, nor whether he has in his employ a large
number of men engaged in the same occupation. He de¬
nies that the large part of the value of the business of
selling phonog: anhs and supplies therefor consists in the
use of the complainant's name in connection therewith; and
he denies that the said phonographs and supplies are to a
large extent purchased by the public because they are
known to be inventions of the complainant, and manufactured
by the complainant or the companies and corporations iden¬
tified with and controlled by the complainant, and he avers;
the truth to be that a certain kind of phonograph is well
known on the market by the name of the Edison Phonograph,
which name signifies a peculiarly constructed phonograph,
and has been in common use for many years as designating
a phonograph of that particular construction.
Second: This defendant denies that the complainant
in any proper sense ever maintained an office in the Edison
Building, on Broad Street, in New York City, and avers
the truth to be that for a time the complainant's name was
on the Directory of the Edison Building on the ground
floor as Thomas A. Edison, Seventh Floor, Room 2} that
while the said Edison's name was on the said Directory
the said Edison did not even have a desk or chair in the
^building; that the seventh floor, and the whole of it,
during the time that Mr. Edison's name was on the Directory
was the offices of the General Electric Company, and that
Edison did not during all the time his name was on the
Directory visit the building oftener than once a month.
This defendant admits that some time about the year Eight¬
een hundred and ninety four, he became engaged in the
business of buying and selling phonographs and supplies
therefor; that at first his business was carried on in a
small way while he was in the employ of the General Elec¬
tric Company; that he was in the employ of the Thomson-
Houston International Electric Company from Eighteen hun¬
dred and ninety-two until its consolidation with the Gen¬
eral Electric Company in 1893 or 1894, and from thence in
the employ of the General Electric Company, having charge
of the New York Office of their foreign department until
some time in the year 1897, when he left their employ and
4.
went into busire ss for himself, and during all the time
from 1892 continuously until the present time, this defen¬
dant had his place of business and office in the said.
Edison Building, which now belongs, and has belonged since
1892, to the General Electric Company.
This defeid ant admits that his business increased, and
that in 1897 he started in business on a larger scale, hav¬
ing an office in the Edison Building, in charge of his
brother Hohn O.Prescott. He admits that some time in the
year 1897 or 1898 he adopted the name of the Edison Pho¬
nograph Agency, and avers that he did so wdth the know¬
ledge and cons ent^of the Edison Phonogaph Works, the
manufacturers of the Edisn phonographs, and of the Nat¬
ional Phonograph Company, the selling agents in the United
States, of the Edison Phonographs; and that he adopted
such name at the suggestion of william E.Gilmore, who was
[ the General Manager of the Edison Phonograph Works, and' of
ithe National Phonograph Company. He denies that the se¬
lection of the Edison Building for his office, and the
use of the term “Edison Phonograph Agency" were either
of them made for the purpose of enabling him to get hold
of letters or telegrams that might be sent to complainant
addressed to the Edi a n Building, or for the purpose of
intercepting persons who might call at the said building
to inquire for the complainant; that his relations with
the Edison Phonograph Works, the companion the complain¬
ant's at West Orange, manufacturing’ phonographs at West
•Orange, and the National Phonograph Company, the selling
5.
agents for the said phonographs, were very close and con¬
fidential; that he was given by them an extra discount
upon goods bought, and that they availed themselves of
sales to him and gave him special favors for the reason
that neither Mr. Edison nor the Edison Phonograph Works,
nor the National Phonograph Company could legally sell
.phonographs for export to foreign countries, and as the
business of this defendant was almost altogether an export
business, sales made to him in this country did not af¬
fect to any appreciable extent the domestic trade of the
said Edison Phonograph Works and the said National Phono¬
graph Company, but enabled those companies to increase
their sales to the extent that the goods bought of them by
this defendant were exported, and that the said Thomas A.
Edison was largely interested both in the Edison Phono¬
graph Works, and the National Phonog- aph Company, was a
large stockholder in each concern, and that his profits
were largely increased by the sales made to this defendant,
so that a practice grew uprr.of having mail, which was sent
to West Orange addressed to Mr. Edison or to the Edison
Phonograph Works or to the National Phonograph Company re¬
lating to or containing orders for phonographs or supplies
for export, sent to this defendant to be filled, and, in
return, with the knowledge and consent of the Edison Pho¬
nograph Works at West Orange, and the National Phonograph
■ . Company ,^and_^TE^so^ this defendant opened occasionally
telegrams or cablegrams and letters addressed to Thomas A.
Edison at the Edison Building, and repeated them by tele-
6.
phono or sent them by mail, as necessity required, to the
Edison factories at West Orange; that this course of busi.
ness was well known to, and approved by, all parties, and
that no one ever objected to the same until some time in
the Pall of 1898; and as soon as objection was raised,
the practice was discontinued by this defendant.
V And tllis defendant denies that he, at any time, attempted
to defraud any persons; and he denies that he ever rep¬
resented himself as the said Thomas A. Edison'^ agent, ex¬
cept in replying to letters delivered to him to be answer¬
ed on Mr. Edison's behalf by William E. Gilmore and repres¬
entatives of Mr. Edison or of some of his various corpora¬
tions at Orange, Hew Jersey. This defendant says that he
sent notice to the Edison Manufacturing Company and the
H at.ional Phonograph Company in the Spring of 1888 that he
had changes his business name to the name of the Edison
Phonograph Agenc y, and asked them to change the account
on their books, which they accordingly did; but his use
of the name Edison Phonograph Agency had been known to
them long previous, and the- Edison Phonograph Works, Edi¬
son Manufacturing Company and National Phonograph Company
had caused circulars and catalogues to be printed in ac¬
cordance with their regular forms of catalogues and cir¬
culars, and by their own printer, which contained the
namra and address of the Edi son Phonograph Agency, P.M.
Prescott, Manager, Ediso n Building, New York, and upon
some of said circulars and catalogues was printed by the
Edison Phonograph Works or the National Phonograph Company
the words "trade mark", with a fac-simile of Thomas Edi-
7.
son s signature; and that while this defendant cannot say
with certainty whether Mr. Thomas A. Edison knew of this
fact, it is nevertheless true that Mr. William E. Gilmore,
who was Mr. Edison's General Manager at West Orange, and
had the principal charge of Mr. Edison's business there,
knew of it and approved of it, and that both the Edison
Manufacturing Company, which was a company manufacturing
electrical supplies and controlled by Mr. Edison, and the
national Phonograph Company, which was also controlled by
Mr. Edison, rendered bills to this defendant under the name
of the Edison. Phonograph Agency, and shipped goods to him
under that name, and that drafts for money sent from for¬
eign countries, payable to the order of Thomas A. Edison,
were turned over by the Edison Phonograph Works at West
Orange, or the National Phonograph Company or the Edison
Manufacturing Company, to this defendant, and the money
was drawn by this defendant, and the orderd filled by
this defendant; that some times in replying to letters
addressed to T. A. Edison, this defendant may have stated
substantially that “Your letter addressed to T. A. Edison
has been handed to me for reply, whose agent I am," or
words to that effect, and in every case in which that lan¬
guage was used, it was used to explain the reason for
this defendant's replying to a letter addressed to Mr.
Edison; and that as soon as odjection was made by Mr.
Edison, this defendant immediately discontinued the prac¬
tice.
With reference to the complaint from Jesus Riera,
mentioned in the complainant's Bill, this defendant states
the fact to be that on or about October 7, 1898, he re¬
ceived an order from the said Jesus Riera for one Edison
Automatic Speaker abd one flexible connection; that the ■
goods were shipped to the said Riera on October 24th. by
mail; that they amounts d in value to about five dollars
and seventy five cents; that the delay in shipment was due
to the fact that this defendant had placed the order for
the same with the National Phonograph Company in the reguS
lar course of business, and that after repeated requests £
by telephone and in person to W.E. Gilmore, General Manager,
and one J.R. Schermerhorn, Assistant Manager, of the Edi¬
son Phonograph Works at West Orange, they declined to
furnish him with the goods, so that he was obliged to ob¬
tain them from another source, and shipped them on October
2 4th. seventeen days after receipt of the order, which de¬
lay is not an extraordinary delay.
As to the order of Frederico Arnavat, this defendant
says that Mr. Arnavat was a regular customer of this defen¬
dant; that he had sent him many orders addressed to this
defendant personally, and that the shocks for the money
had always heen payable either to this defendant personally
or to the Edison Phonograph Agency, and he denies that the
said Federico Arnavat ever sent an order to complainant
for a phonograph and supplies which was received and ap¬
propriated by this defendant; and he avers that all moneys
sent t o him by Arnavat were in payment for goods sold and
shipped by this defendant to said Arnavat.
9.
Third: This defendant admits that sometime in
October, 1898, xa telegram was received at the Edison
Building, which, as this defendant now recollects, was
receipted for by the Gerevral Electric Company, who handed
the telegram to this defendant in accordance with the
^-usual course of business; that it had been the custom of
this defendant to repeat to Mr. Edison in Orange by tele¬
phone or telegram, any telegrams or cablegrams; that as
this defendant now recollects, the telegram was received
on a Saturday, October 29th; that this defendant knew
that the Works at West Orange v/ould not be open at that
time, and, as the telegram did not seem important, he
placed it in an envelope immediately and mailed it to Mr.
Edison. This defendant says that he opened the said
telegram and mailed it in the ordinary course of business
as he had been accustomed to do. This defendant denies
that he opened said teleg am with the idea that it con¬
tained a telegram in connection with the sale of phono¬
graphs, and he denies that he has opened any telegrams to
the complainant without repeating them over the telephone
or by telegraph, or sending them by mail to the complainant.
Fourth; This defendant knows nothing about a postal
card from A. W. Samuels, mentioned in the Complainant's Bill,
but he says, that on the complainant's own showing, the
said postal card was the property of this defendant, and
should have been sent to this defendant instead of being
retained by the said complainant; that the address of
Phonograph Agency, P.M. Prescott on the said postal card
was ample notice to the said complainant that the said
10.
postal card was not his property, and that he should have
notified this defendant of the receipt of the same at
once; that this defendant knewnothing of it until he
read the Bill of Complaint in this cause. As to the com¬
plaint contained. in the said postal card, the facts are
these: That this defendant received an order from the
said Samuels for a parlor kinetoscope, which this defen¬
dant sent to him; that this defendant never claimed in
any way that the kinetoscope was of Edison Manufacture,
and upon Samuels refusing to accept the kinetoscope, this
defend ant took it hack, although it was exactly what this
defendant had advertised.
Fifth: This defendant admits that the complainant
requested this defendant to discontinue the use of the
complainant's name in connection with his business, and
from holding himself out to be the complainant's agent.
He adnits writing the letter of December 12th. , a copy of
which is attached to the complainant's Bill, and he avers
the truth to bo that he had never, except as hi rein stated,
used the name of Mr. Edison in any way except under the
name of Edison Phonograph Agency under the circumstances
above set forth; and that immediately after receiving Mr.
Edison's request, ho ceased using the name of the Edison
Phonograph Agency, except so far as it might have b een
upon atationery already printed, only a small portion of
which was still on hand, and except also in the use of the
words “F.M. Prescott, Successor to Edison Phonograph Agency"
upon the door of his office and on the directory of the
Edison Building; that it was necessary for this defendant
11
to retain the said name in the settling up of the business
of a co-partnership between this defendant and one Charles
E. Stevens, and in order that he might receive the mail
intended for the said co-partnership. And this defendant
avers that he has the right to use the name of the Edison
Phonograph Agency; that that name was originally adopted
by him in 1897 as above stated with the knowledge and
consent of the complainant 1 s companies, the Manufacturers
and General Sales Agent of the Edison phonographs; that
in May, 1898 this defendant formed a co-partnership with
Charles E. Stevens, and did business urider the name of the
Edison Phonograph Agency; that under that name, while he
was alone and while he was in partnership with the said
Stevens, he purchased and sold Edison Phonographs amount¬
ing to the sum of fifteen thousand dollars monthly; that
phonographs were shipped, bills rendered and letters writ¬
ten to the Edison Phonograph Agency under that name by
the Edison Manufacturing Company and National Phonograph '
Company, and that he was supplied with ’ catalogues and
advertising matter by said companies, or some, or one of
them, bearing the name "Edison Phonograph Agency, F.M. /
Prescott Manager" with a fac-simile of the complainant's
signature thereon;' and that the arrangements between him¬
self and the Edison Manufacturing Company and the National
Phonograph Company were entirely satisfactory until the
month of August 1898 when, on account of the profitable
business which had been built up by this defendant in the
export trade in phonographs, the s aid Thomas A. Edison,
William E. Gilmore, his General Manager, and Charles E.
12.
Stevens, while this defendant was temporarily in Europe,
combined together to break up the defendant's business, to
ruin the defendant, and to secure the profits of the said
business for themselves, and to sell phonographs for export
under the name of Charles E. Stevens in order to avoid the
contractual obligation which the said Thomas A. Edison was
under not to sell phonographs for export; that this defen¬
dant and the said Stevens, doing business under the name of
the Edison Phonograph Agency at the Edison Building, 44
Broad Street, dissolved parti® rship on the twelfth day of
September, Eighteen hundred and ninety-eight, a copy of
the dissolution agreement is hereto annexed marked Schedule
1, and made part hereof; and that the said Charles E.
Stevens, in consideration of Twelve Hundred and Eighty-one
Dollars and fifty-five cents, then and there paid to him
by this defendant, transferred to this defendant all his
interest in the assets of the firm, a copy of the said as¬
signment being hereto annexed, marked Schedule 2., and
made part hereof; that prior to the dissolution of the
said firm, the s.aid Stevens had made arrangements to enter
into business himself in competition with this defendant, a
and had actually taken steps to that end prior to the dis¬
solution; that since the dissolution of the partnership,
the said Stevens has carried on the business of selling
phonographs, electrical apparatus and supplies, on the same
floor of the Edison Building with this defendant, and on
the floor below and in direct competition with him; that
the said Stevens has been assisted in his said' business by
the complainant, and this defendant charges that the com-
13.
plainant has a personal interest in the business of said
Stevens, and is really the responsible party back of it,
or one of the responsible parties back of it, and is main¬
taining the said business in the name of the said Stevens
in order that he may sell phonographs for export outside of
the Unite d states and evade his contractual liabilities
above mentioned} that the said Stevens maintained upon his
office door the words “Edison Phonograph Agency after the
dissolution of the co-partnership between this defendant
and the said Stevensr,:and continuously up until some time
after the correspondence between the complainant and Post¬
master Van Cott, set forth in the cpmplainant ' s bill} and
this defendant charges that the said name “Edison Phono¬
graph Agency" was maintained by the said Stevens upon his
office door with the knowledge and consent of the said com¬
plainant, and in the hope that the said Stevens might
thereby bu£±± obtain mail matter intended for this defendant,
and that the said name “Edison Phonograph Agency" was re¬
moved from the said Steven's office only affe r the failure
of the complaint to divert all mail addressed to the Edison
Phonograph Agency to the National Phonograph Company.
SIXTH: This defendant denies that he has sent out
catalogues of phonograph records and supplies in the Span¬
ish language in which he advertises himself as the Edison
Phonograph Agency, and says that if any such catalogues
were sent out it was only catalogues^ that were printed be¬
fore the correspondence with Mr. Edison hereinbefore re¬
ferred to
14.
SEVENTH: This defendant further answering says that
as to the complaint said to have been made by W.T. Hayes, the
facts are these: This defendant received an order from the
said Hayes on or about January 26, 1899; that one of the
articles ordered was a part of an Edison phonograph; that
it was impossible for the defendant to secure the said part
from the- National Phonograph Company or from the Edison
Phonograph Works, and that it took some time to procure the
same, but the order was filled and the goods shipped to the
said Hayes on February 27, 1899, which was not an unusual
delay; that the whole amount of the said order from W.T,
Hayes was Eleven Dollars and Eighty Cents.
EIGHTH: This defendant admits that the complainant
wrote to the Postmaster of the City of New York requesting
the postal authorities of that city to take some means to
prevent the delivery of letters to this defendant, and that
the complainant received a letter from the Postmaster of
New York substantially as stated in his said bill. And
this defendant avers that since the refusal of the Post--
master of New York to deliver to the complainant mail in¬
tended for this defendant, and addressed to the Edison
Phonograph Agency, the s: aid complainant, or the National
Phonograph Company, under his direction and at his sugges¬
tion, has caused to.be opened a business place for the
sale of phonographs at 174 Fifth Avenue, in the City of New
York, and has adopted as a business name for said office
the name "Edison's Phonograph Agency", and that the smid
complainant and the said National Phonograph Company have
entrusted to the said Edison's Phonograph Agency, at 174
15.
Fifth Avenue, the entire retail trade in phonographs in New
Yorlc City, and that they adopted the name "Edison's Phono¬
graph Agency" for the purpos e of deceiving the public and
of securing an unfair advantage of this defendant, and
filching from this defendant his right to the name of Edisci
Phonograph Agency.
NINTH: This defendant further answering says as to
the alleged complaint of B.A.Cousins, of Georgetown, Demor-
ara, this defendant says that he knows of no such man, and
supposes the person intended is B.A. Cauzius; that with
reference to Mr. Cauzius the facts are these; On January
4, 1899, an order was received from him, accompanied by
Thirteen Dollars and Five Cents ($1305); that the order
was not clear, and this defendant wrote to the said Cauzius
for further information; that the said Cauzius wrote to
him on March 15, 1899, agreeing to take a graphophone in
Place of the phonograph which had been ordered; that there
was some delay in filling' the order, but the order was fin¬
ally filled on May 30th; and that this defendant has had
no complaint from the said Cauzius since that time.
TENTH: This defeat ant denies that he is unlawfully
using the complainant's name in connection with his said
business in any way, and he denies that he is in any way
deceiving the public, or is inducing the public to believe
that this defendant is an agent of the complainant, and he
denies that he is receiving money from the public and not
furnishing than goods ordered and paid for by them, and de¬
nies that ho is not conducting his business in a proper waj,
and denies that his conduct of his business tends in any
16.
way to bring the complainant's name and business into dis¬
repute with the public, and he says that the complaints set
forth in the complainant's bill to that effect are trivial
m amount and in view of the magnitude of your defendant's
business are insignificant and no more than are likely to
arise in any large business, and this defendant says that so
far from this defendant bringing the complainant's name ini
disrepute or injuring his business, the fact is that the
complainant has been greatly benefited in the sale of pho¬
nographs and other supplies by the advertisement of the
same by defendant's business activity, and at the defen¬
dant's expense.
ELEVENTH: And this defendant further answering says
that while in order to avoid a litigation and a conflict
with the complainant, and to avoid even seeming to desire
to use the complainant's name, this defendant was willing
upon the request of the complainant to cease using the name
of Edison Phonograph Agency, except as already stated, and
had actually ceased the use of the same, except as stated,
he still insists that he had and has a valid right to the
use of that name, and that the complainant's conduct is
Planned and calculated to deprive this defendant of the
valuable property which he has built up in the name of
Edison Phonograph Agency at large expense.
And this defendant prays to be hence dismissed
with his. reasonable costs and charges in this behalf most
wrongfully sustained.
Colie & Swayze
Solicitors of defendant.
Francis J. Swayze
of. Counsel.
17.
SCHEDULE L
AJb RJUB mi - SUE - JULfl-a 0 L U T I 0 II.
By mutual consent of the parties to the annexed
agreement ne tween Frederick M.Prescott and Charles E.
Stevens, dated May 11th., 1898, the partnership thereby
formed is wholly dissolve d.
Frederick M.Pr escott only is authorized to sign
in liquidation.
IN WITNESS WHEREOF we have hereunto set our hands
this twelfth day of September, 1898
J.D.Gonell
F. M.Prescott,
C.E. Stevens.
18.
SCHEDULE 2.
In consideration of the sum of ora thousand two
hundred and eighty ene and 55/100 dollars (§1281.55) the
receipt of which is hereby acknowledged, I hereby asd gn,
transfer and set over to Frederick M. Prescott, all my in¬
terest in the assets of the firm consisting of said Pres-
citt and myself, doing business as the “Edison Phonogiiph
Agency" which was dissolved by mutual consent on September
twelfth 1898; the above sum of one thousand two huifl red
and eighty one and 55/100 dollars (§1281.55) being received
by me in full satisfaction of my interest in said firm,
and all claims of mine gainst said Prescott.
Dated Hew York, C.E. Stevens, (L.s.)
September JL2. 1898.
Witness
J.D.Gonell.
0*0
[ State of New Jersey1
:SS.
County of Essex : FREDERIC M. PRESCOTT being duly sworn
on his oath according to law says; that he is the defendant
above named; that he has read the foregoing answer; that
the statements therein contained so far as relates to his
own acts are true and so far as relates to the acts of others
he believes them to be true; that it is true that sometime
about the yaer 1894, he became engaged in the business of
buying and selling phonographs and supplies therefor; that
at first his business was carried on in a small way while he
was in the employ of the General Electric Company; that he
was in the employ of th e Thomson-Houston International Elec¬
tric Company from 1892 unyil its consolidation with the Gen¬
eral Electric Company in 1893 or 1894, and from thence in
the employ of the General Electric Company, having charge of
their New York Office of their Foreign Department until some
time in the year 1897, when he left their employ and went
into business for hinself, and during all the time from 1892
continuously until the present time, this defendant had his
place of business and office in the said Edison Building,
which now belongs, and has belonged since 1892 to the Gerera:
Electric Company; that his business inctf eased and that in
1897 he started in business on a larger scale, haying an
office in Gie Edison Building, in charge of his brother,
John 0. Prescott; that some time in the year 1897, he adopter
the name of the Edison Phonograph Agency, and did so with
the knowledge and consent of the Edison Phonograph Works the
manufacturers of the Edison Phonographs and of the National
Phonograph Company, the selling agents in the United States,
of the Edison Phonographs, and that he adopted such name at
20.
the suggestion of William E. Gilmore, who was the General
Manager of the Edison Phonograph Works, and of the National
Phonograph Company; that the selection of the Edison Build¬
ing for his office, and the use of the term “Edison Phono¬
graph Agency" were not nor was either of them for the pur¬
pose of enabling him to get hold of letters or telegrams
that might be sent to complainant addressed to the Edison
Building, or for the purpose of intercepting persons who
might call at the said building to inquire for the complain¬
ant; he says that his relations with the Edison Phonograph
Works, the company of the complainant, manufacturing phono¬
graphs at West Orange, and the National Phonograph Company,
the selling agents for the said phonographs, were very
close and confidential; that he was given by them an extra
discount upon goods bought, and that they availed themselves
of sales to him and gave him special favors for the reason
that Mr.Edis) n nor the 'Edison Phonograph Works, nor the
I National Phonograph Company could legally sell phonographs
for export to foreign countries, and as the business of this
defendant was almost altogether an export business, sales •
.made to him in this country did not affect to any appreciable
extent the domestic trade of the said Edison Phonograph Works
and the said National Phonograph Company, but enabled those
companies to increase their sales to the extent that the
goods bought of them by this deponent were exported and that
the said Ehomas A. Edison was largely interested both in the
Edison Phonograph Works and the National Phonograph Company,
was a large stockholder in each concern, and that his prof¬
its were largely increased by the sales made to this depon-
21.
ont, so that a practice grew up of having mail, which was
sent to West Orange addressed to Mr. Edison or to the Edison
Phonograph Works or the national Phonograph Company, relat¬
ing to or containing orders for phonographs or supplies for
export sent to this dq? onent to be filled, and in, return,
with the knowledge and consent of the Edison Phonograph
Works at We st Orange, and the National Phonograph Company,
and Mr. Edison, this deponent opened occasionally telegrams or
cablegrams and letters addressed to Thoms A.Edison at the
Edison Building, and repeated them by telephone or sent them
by mail, as necessity required, to the Edison factories at
V/est Orange; that this course of busiiB’ss was well known to,
and approved by all parties, and that no one ever objected
to the same until some time in the Fall of 1898; and as soon
as objection was raised, the practice1 was discontinued by
this deponent and has never been resumed; that this depon-
®nt never represented himself as the said Bhomas A.Edison' s
Agent, except in replying to letters delivered to him to be
answered on Mr. Edison's behalf by William E. Gilmore and rep¬
resentatives of Mr. Edison or of some of his various corpora¬
tions at Orange, Hew Jersey; that this dq? onent sent notice
to the Edison Manufacturing Company and the National Phono¬
graph Company in the Spring of 1898 that he la d changed his
business name to the name of the Edison Phonograph Agency,
and asked them to change the account on itheir books, which
they accordingly did; but his use of the name of Edison
Phonograph Agency had been known to them long previous, and
the Edison Manufacturing Company and the National Phonograph
Company has caused circulars and catalogues to be printed in
22.
accordance with their regular forms of catalogues and circu¬
lars, and by their own printer, which contained the name and
address of the Edison Phonograph Agency, P.M. Prescott, Manag¬
er, Edison Building, Mew York; and upon some of said cir¬
culars and catalogues there was caused to bo printed by the
Edison Manufacturing Company or the National Phonograph
Company the words, "trade mark" with a fac-simile of Thomas
Edison's signature; that Mr .William E. Gilmore, who was Mr.
Edison's General Manager at West Orange and had the prin¬
cipal charge of Mr. Edison' s business there, knew of the
transactions and approved of it, and that both the Edison
Manufacturing Company, which was a company manufacturing
electrical supplies and controlled by Mr. Edison, anf the
National Phonograph Company, which was also controlled by
Mr. Edison, rendered printed bills to this defendant under the
name of the Edison Phonograph Agency, and shipped goods to
him under that name, and that drafts for money sent from
foreign countries, payable to the order of Thomas A. Edison
were turned over by the Edison Phonograph Works at West
Orange or the National Phonograph Company or the Edison Manu¬
facturing Company, to this defendant, and the money was drawn
by this deponent, and the orders filled by this d(p onent;
that someth® s in replying to letters* addressed to T.A.Edi-
soh, this d?> onent may have stated substantially that "Your
letter addressed to T.A.Edison has been handed to me for
reply, whose agent I am, " or words to that effect, and in
every case in which that language was used, it was used to
explain the reason for this defendant's replying to a letter
addressed to Mr. Edison and that as soon as objection was
made by Mr. Eaton, this deponent immediately discontinued
the practicej with reference to the complaint from Jesus
Riera, mentioned in the complainant's bill, this deponent
states the fact to be that on or about October 7, 1898, he
received an offer frommthe said Jesus Riera for one Edison
Automatic Speaker and one flexible connection; that the
goods were shipped to the said Riera on October 24th. by mail
that they amounted in value to about Five Dollars and Seventy
five cents; that the delay in shipment was due to the fact
that this deponent had placed the order for these with the
Rational Phonograph Company in the regular course of busi¬
ness, and that after repeated requests by telephone and in
person to W.E. Gilmore, General Manager, and one J.R.Scher-
merhorn, Assistant Manager of the Edison Phonograph Works,
at West Orange, they declined to furnish him with the goods
so that he was obliged to, obtain them from another source,
and shipped them on October 24th, seventeen days after re¬
ceipt of the order, which delay is not an extraordinary de¬
lay. As to the order of Frederico Arnivat, this deponent
says that Mr.Arnavat was a regular customer of this depon¬
ent; that he had sent deponent many orders addressed to thi s
deponent personally, and that the checks for the money had
always been made payable either to this deponent personally
or to the Edison Phonograph Agency, and that the said Fred¬
erico Arnavat never sent an order to complainant for a pho¬
nograph and supplies which was received and appropriated by
this deponent; that all moneys sent to him by Arnavat were
in payment for goods sold and shipped by this deponent to
said Arnavat; that some time in October 1898, a teleg- am
was received at the Edison Building, which, as this deuonent
now recollects, was receipted for by the General Electric
Company, who handed the telegram to this deponent in accor¬
dance with the usual custom of business} that it had been
the custom of this deponent to repeat to Mr. Edison in Orange
by telephone or telegram any telegrams or cablegrams; that,
as this deponent now recollects, the telegram was received
on a Saturday, October 29th; that this deponent knew that
the Works at West Orange would not be open at that time, and,
as the telegram did not seem important, he placed it in an
envelope immediately and mailed it to Mr. Edison; • that he
opened the said telegram and mailed it in the ordinary cours*
of business as he had been accustomed to do; that he did not
open said telegram with the idea that it contained a tele¬
gram in connection with the sale of phonographs, and he has
not opened any telegrams to the complainant without repeating
them over the telephone or sending them by mail to the com¬
plainant. That this deponent knew nothing of the postal
card from A. W. Samuels until he road the Bill of Complaint in
this cause. As to the complaint contained in the said pos¬
tal card, the facts are these; that this deponent received
an order from the said Samuels for a parlor kinetoscope,
which this deponent sent to him; that this deponent never
claimed in any way that the kinetoscope was of Edison manu¬
facture, and, upon Samuels refusing to accept the kineto¬
scope, this deponent took it back, although it was exactly
what this deponent had advertised. That this deponent
has never, except as herein stated, used the name of Mr.
Edison in any way except under the name of Edison Phonograph
25.
Agency under the circumstances above set forth) that immed¬
iately after receiving Mr. Edison' s request, he ceased using
the name of the Edison Phonograph Agency, except so far as
it might have been upon stationery already printed, only a
small portion of which was still on hand, and except also in
the use of the words, "F.M.Prescott, Successor to Edison
Phonograph Agency" upon the door of his office, and on the
directory of the Edison Building) that it was necessary for
this deponent to retain the said name in the settling up of
the business of a co-partnership between this deponent and
one Charles E. Stevens, and in ordefi that he might receive
the mail intended for the said co-partnership) that the
name Edison Phonograph Agency was originally adopted by him
in 1897 as above stated with the knowledge and consent of the
complainant's companies, the Manufacturers and General Sales
Agents of the Edison Phonographs) that in May, 1898, this
deponent formed a co-partnership with Charles E. Stevens, and
did business under the name of the Edison Phonograph Agency)
that under that name, while he was alone and while he was in
partnership with the said Stevens, he purchased and sold
Edison Phonographs amounting to the sum of Fifteen Thousand
Dollars monthly, and was the largest customer of the com¬
plainant's companies; that phonographs were shipped, bills
rendered and letters written to the Edison Phonograph Agency,
under that name by the Edison Manufacturing Company and Nat¬
ional Phonograph Company, and that he was supplied with cat¬
alogues and advertising patter by said companies, or some,
or one of them, bearing the name "Edison Phonograph Agency,
P.M. Prescott, Manager" with a fac-simile of the complainant's
26.
signature thereon} and that the arrangements between himself
and the Edison Phonograph Works and the National Phonograph
Company were entirely satisfactory until the month of August,
1898} that this deponent and the said Stevens, doing business
Uder the name of the Edison Phonograph Agency at the Edison
Building, 44 Broad Street, dissolved partnership on the
twelfth day of September, eighteen hundred and ninety-eight,
I a copy of the dissolution agreement is annexed to said Bill
larked Schedule 1, and made part thereof} and that the said
harles E. Stevens, in consideration of Twelve Hundred and
feighty one Dollars and Fifty-five Cents, then and there paid
to him by this deponent, transferred to this deponent all
his interest in the assets of the firm, a copy of the said
asa gnment being annexed to said Bill, marked Schedule 2,
and made part thereof} that prior to the dissolution of the
said firm, the said Stevens had made arrangements to enter
into business himself in competition with this deponent}
and had actually taken steps to that end prior to the disso¬
lution} that since the dissolution of the partnership, the
said Stevens has carried on the business of selling phono¬
graphs, electrical apparatus and supplies, on the same floor
and floor below of the Edison Building with this deponent,
and in direct competition with him} that the said Stevens
has been assisted itf his; said business by the complainant}
I that the said Stevens placed upon his office foor the words
"Edison Phonograph Agency" imne diately after the dissolution
of the co-partnership between this deponent and the said
Stevens, and maintained the same continuously up until some
27.
;ime after the correspondence between the complainant and
Post Master Van Cott, set forth in the complainant's Bill}
that the said name "Edison Phonograph Agency" was removed
from the said Stevens' office only after the failure of
the complainant to divert all mail addressed to the Edison
Phonograph Agency to the National Phonograph Company;
that this dq? onent has not sent out any catalogues of pho¬
nographs records and supplies *s in the Spanish language
in which he advertises himself as the Edison Phonograph
Agency; that as to the complaint said to have been made by
W. T. Hayes, the facts are these: This deponent received an
order from the said Hayes on or about January 26, 1899;
that one of the articles ordered was a part of an Edison
Phonograph: that it was impossible for the deponent to' se¬
cure the said part from the National Phonograph Company or
from the Edison Phonograph Works, and that it took some¬
time to procure the same, but .the order was filled and the
goods shipped to the said Hayes on February 27, 1899, which
was not an unusual delay; that the whole amount of the
said order from VI.?. Hayes was Eleven Dollars and Eighty
Cents; that since the refusal of the Postmaster of New
York to deliver to the complainant mail intended for this
deponent, and addressed. to the Edison Phonograph Agency,
the said complainant, or the National Phonograph Company,
has caused to be opere d a busin ss place for the sale of
phonographs at 174 Fifth Avenue , in the City of New York,
and has adopted as a business name for said office the
name "Edison Phonograph Agency" and that the said complain¬
ant and the said National Phonograph Company have entrusted
28.
to the said Edison's Phonograph Agency, at 174 Fifth Ave¬
nue, the entire retail trade in phonographs in Hew York
City, and that the name Edison's Phonograph Agency is so
familiar to deponent's trade name that it is calculated to
deceive the public. That as to the alleged complaint of
R. A. Cousins, of George town, Demorara, this deponent says
that he knows of no such man, and supposes the person in¬
tended is R. A. Cauzius; that with reference to Mr. Cauzius
the facts are tftese: On January 4, 1899, an order was re¬
ceived from him, accompanied by Thirteen Dollars and Five
Cents ($13.05) ; that the order was not clear, and this
defendant wrote to the said Cauzius fop further informa¬
tion; that the r, said Cauzius wrote to him on March 15,
1899, agreeing to take a graphophone in place of the pho¬
nograph which had been ordered; that there was some delay
in filling the order, but the order was finally filled on
May 30, and that this dtp onent has had ho complaint from
the said Cauzius since that time. This deponent further
says that he is not using the complainant's name in com=
nection with his said business in any way except as "succes
sor to the Edison Phonograph Agency11 and says that he is
not in any way deceiving the public, or inducing the
public to believe that this. d tp onent is an agent of the
complainant, and he further says that he is not receiving
money from the public and not furnishing them goods ordered
and paid for by them, and that he is conducting his busi¬
ness, in a proper way, and that his conduct of his business
does not tend in any way to bring the complainant's name
and business into disrepute with the public, ana the fact
is that the complainant has been greatly benefited in the
sale of phonographs and. other supplies by the advertisement
of the same by deponent's business activity and at the
deponent's expense.
Sworn and subscribed before me, :
. FREDERICK M. PRESCOTT,
this 14th. day of August, 1899. ;
Thomas L. Raymond,
Master’ in Chancery of
Hew Jersey.
so.
State of Hew York :
.83
County of Mew York, j
JOHN 0. PRESCOTT, being duly sworn
on his oath according to law, says; I reside in Montclair
How Jersey, and am a brother of Frederic M. Prescott. I
have been Ilia chief clerk since April 15, 1897, beginning
in October 1897, My brother, Frederic M.Prescott, fre¬
quently visited the Edison Works at Orange, Hew Jersey,
going as often as once a week, and sometimes oftener, and
on each occasion he would bring back with him a list of
addresses, most of which were to countries outsidd of the
United States and Canada, some of which were in Hew York
City and otliers in different localities in the United
States. I know that the said Frederic M.Prescott went to
the Edison Works at Orange, Hew Jersey, for I have fre¬
quently called him up on the telephone at that place and
talked with him over the telephone, and I know that the
list of addresses which he brought back from Orange upon
these occasions was very frequently in the handwriting of
Charles E. Stevens, whoso handwriting I am v ery familiar
with, Along with such list of addresses was a date and
a line or two relating to the subject, for the most part
being orders for goods; that I have frequently writ ten
letters to persons named in those lists acknowledging
their letter as addressed either to the Edison Works at
Orange, or to T. A. Edison; and know that orders have been
filled and business done in pursuance of such letters;
that after the information of the partnership between said
Frederic M.Prescott and Charles E. Stevens in May, 1898, the
31.
said St ovens .was in the habit of bringing to the office
such addresses and dictating the reply himself. I have
seen him bring to our office in New York the identical
letters, have hoard him dictate answers thereto and seen
him take the letters away. The letters which Stevens
brought to the office were addressed some to Thomas A.
Edison, some to the Edison Phonograph Works and some to
the National Phonograph Company, Many of these letters
were handed to me to make out orders from, to copy the ad¬
dress into our address books, and to mail catalogues to.
Charles E. Stevens was the General Sales Agent of the
National Phonograph Company prior to the formation of the
partnership hetween him and Frederic M. Prescott in May
1898, and while he was such General Sales Agent, he in-
s tructed me to open and read any telegrams or cablegrams
addressed to E dison, the Edison Phonograph Works, or the
National Phonograph Company, which might come into the
office of Frederic M. Prescott, and to telephone to Orange
the message; that William E.Gilmor e, in September 1897,
and from thence continuously to the present time, has been
the General Manager of the Edison Manufacturing Company}
that he was frequently in our office in the Edison Building
44 Broad Street, and consulted with Frederic M. Prescott
privately. Irremember when my brother went to Europe in
August 1898. Immediately after his departure, his parte
ner, Charles E. Stevens, began to spend less time in the
New York Office, and more time at the Edison Works at
Orange} that during my brothers absence, he spent three
afternoons a week at least at Orange} that he assumed the
entire control of the correspondence, although frequently
he was not there during the entire day. I saw him having
a private list of customers made by the stenographer; that
he allowed the correspondence, especially communications
addressed to Frederic M.Prescott for the Edison Phonograph
Agency, to remain unanswered and to accumulate, and for¬
bade this deponent to answer letters when this deponent
called his attention to the importance of keeping up the
correspondence. During my brother's ansence in Europe, I
know he attempted to make arrangements with the General
Electric Company to rent an office. My brother returned
on the second of September, and- on that very day a lease
was signed between the said Stevens and the General Elec¬
tric Company.
Subscribed and sworn to before me,
a Notary Public in and for the
County of New York and State of
New York, this 12th. day of Aug¬
ust, A. D. ,1899, Witness ny hand and
official seal
JOHN 0 PRESCOTT.
Alick G.Macandrew,
No.tary Public No. 2 in and for the County
of New York and State of New York.
County of Hew York.
FRANCES Tj.MIIjIjER, being duly sworn
on 3b r oath according to law says: I am a stenographer
in the employ of Frederic M. Prescott, Edisa n Building, Now
York City, and have been in his employ as an English and
Spanish stenographer, having charge of the foreign cor¬
respondence since December 8, 1897, and until February
18, 1899. The said Prescott weekly, or oftener than once
a week, and up until May 189.8, when the firm of Prescott &
Stevens was formed, was in the la bit of visiting the Edison
Phonograph Works in Orange, Hew Jersey. I have frequent¬
ly called him up on the telephone and that place and read
to him over the telephone, telegrams. Always when he re¬
turned from the Edison Phonograph Works at Orange, he
brought a list of addresses, most of them in places out¬
side of the United States and Canada, some addresses of New
York Commission Houses and some addresses of different per¬
sons in the United States. I know these facts, because I
wrote the letters to these addresses on each occasion when
Mr. Prescott retimed from Orange. All of the letters re¬
ferred to phonographs or kinetoscopes for export. I know
William E.Oilmore and Charles E. Stevens. Both of them
were frequent visitors at the office of Frederic M.Pres-
cott at the Ediaa n Building, 44 Broad street, New York
City, and their relations with Mr.Prescott seemed to be
very close and cordial. I have frequently seen them en¬
gaged in private conferences.
34.
Subscribed and sworn to before me,
a Notary Public in and for the
County of Now York Stateof New York,
this 12th. day of August, A. D. ,1899
Witness hand and official seal
Alick G.Macandrew
PRANCES L. MILLER.
Notary Public No. 2. in and for the
County of New York, State of New York.
STATE, OF NEW YORK
COUNTY OF NEW YORK.
35.
Sfl
FLORIDA'S. KELLOGG, being duly
sworn on her oath says; I am a stenographer in the employ
of the General Electric Company's Foreign Department, New
York City, and have been in their employ from 1892 continu¬
ously until the present time. From 1894 until the first
of January, 1896, on which latte r date Frederic M. Prescott
I was the personal stenographer of the said Prescott. I
know that it was usual for personal cables- ams addressed
to Thomas A. Edison to be delivered to the General Electric
Company in the Edison Building, and that such cablegrams
came to the Foreign Department in which I was employed,
and I know that it was the custom of Frederic M. Prescott
to open these cablegrams and telephone their contents to
the Edison Phonograph Works in Orange, New Jersey.
Subscribed abd sworn to before me
a Notary Public in and for the
County of New York State of New
York this 12th. day of August, A. D. ,
1899. Witness my hand and offi-
Notary Public #2 in and for the
0 ounty of New York, State of N.Y,
State of New York :
County of Now Yorkj
CHARIiE S A . GUNDAKER , Jr . , be ing
duly sworn on his oath according to law do-poses and says:
I reside at Newark, New, Jersey, and am in the employ of
the Gere ral Electric Compary, 44 Broad Street, New York,
having charge of the sales of incadescent electric lamps
for that Company; I know that Mr.THdmas A. Edison for
several years had his
i upon the Directory Board c
the first floor of the building, 44 Broad Street, New
■York, as laving an office on
building. The seventh flooi
the Seventh Floor of that
• was entirely occupied by the
f v Jjy ’ office of the Gere ral Electric Company. Mr Edison, to
^ ^ my best knowledge and belief, had no desk there, and while
his name was on the Directory Board, he was very seldom in
^ jc/the building and had no regularly established office at
V that place.
Sworn and subscribed before me, ;
V'j \ A Notary Public in and for the
I' ) County of New York and State of
County of New York and State of
New York, this 15th. day of August
A. D. 1899.
WITNESS MY HAND AND OFFICIAL SEAL,;
Chas . A . Gundake r , Jr .
Notary Public No. 2 in and for the
County of Now York, state ofNew
York.
37.
State of NewYiTork,;
; SS
C ounty of Hew York.
GEORGE 0. SCHHEIDER being duly
sworn on his oath says; that he is a resident of the City
of Hew York, having a place of busiress at 162 Chambers
Street in said City; that he knows Frederic M.Prescott
and Charles E. Stevens; that in January 1898, he went to
the national Phonograph Company's office at West Orange,
Hew Jersey to get prices on Phonographs and supplies for
sale in the City of New York and elsewhere; that he saw
the said Charles E. Stevens who was the Manager of Sales
for the National Phonograph Company at that time, and was
referred by the said Stevens to Frederic M.Prescott, 44
Broad Street, New York City; that said Stevens said to
this deponent that Mr. Prescott could take better care of
deponent in New York than they could in Orange, and that
subsequently he called upon Mr. Prescott and found that Mr.
Stevens had written Prescott in regard to the matter.
Subscribed and sworn to before
me, a Notary Public in and for
the County of New York, State
of New York, thi3 16 day of Aug.
ust, A.D. , 1899
GEORGE C. SCHHEIDER.
WITNESS MY HAND AND OFFICIAIi SEAL;
Aliek G.Macandrew.
Notary Public $2 in and for the County of
Hew York, State of New Yor k.
UJ CHANCERY OP NEW JERSEY.
BETWEEN -
C op.pl t. ,
-ANN-
Frodoric M. Prescott ,
Doft. .
Affidavit of Thomas A. Ed: son
'and John F. Randolph .
Hay or. £: Lambert.,'
Solicitors,
In Chancery of New Jersey )
Between )
Thomas A. Edison ) Off BILL &c
Ooniplainant )
) Affidavit of
and )
) Thomas A. Edison.
Frederic M. Prescott )
Defendant. )
State of few Jersey:
: ss.
County of Essex :
Thomas A. Edison being duly sworn
according to law on his oath says: My attention has been
called to the answer filed by Frederic M. Prescott in the
above cause, and I wish to correct some of his statements
which appear in it. The answer states that I never "in any
proper sense" maintained an office in the Edison Building
on Broad Street in New York City. That is not true. When
the General Electric Company was organized about eighteen
hundred and ninety-one by the consolidation of the Edison
General Electric and the Thompson-Houston Electric Company
I had a desk in their offices in the Edison Building, which
was my headquarters in New York where I stopped whenever I
was in New York on business. That was the only office I
had then in New York City. Soon after I took an office on
the fourth floor of that building and maintained it for
sometime, then afterwards gave that up and again had a desk
in the offices of the General Electric Company. These were
my business headquarters in 3few York , find Were used by 'me as
such. As a rule, letters and telegrams to me in New York :
were forwarded to Orange, but if not sent to Orange were
sent to my office or desk In the Edison Building, and were
received by me there or were forwarded to me by some of the
employees of the General Electric Company unopened. No one
there had the authority to open telegrams, cables or. letters
addressed to mer, and I never knew of any being opene^ there .
except the one opened by Frederic ft. Prescott as described in
(8)
my bill of complaint. If I had aver heard of such a thing
being dona, I would immediately have put a stop to it. As
soon as I learned that Prescott had opened one of my tele¬
grams, I came to the conclusion that he might have opened a
great many others, and also letters about which I had no
knowledge, and this induced me to try to prevent any such
further action on his part by communication with the authori¬
ties in Hew York City. The failure of the post office author¬
ities to protect me and also the character of some complaints
I received in regard to Hr. Prescott, made me feel it necess¬
ary to begin thiB, suit. All of the letters in regard to
Prescott’s business to which, my attention was called, com¬
plained that he was carrying on his business in a way, which,
to say, the least, was vary irregular, and the writers wanted
to hold me responsible. I therefore felt that for my own
protection, it was necessary for me to put a stop to his use
of any title that would in any way give the public to under¬
stand that he was ray agent or represented me. I never in
any way consented to his use of the name “Edison Phonograph
Agency" or the use of the. word "Agency" in any way in con¬
nection with my name; I do not permit that word to be used
in connection with my name except where the business is
actually carried on by me. I have had a great deal of
trouble about this unauthorized use of my name, and. my law¬
yers are now carrying on a number of other suits to prevent
such use. Wherever my attention has been called to such
use I have directed it to be stopped and have instructed my
lawyers to write to the offending parties. In most cases
Buch letters produce the desired effect, but in other cases
like the present one, I have had to bring suit. I learned
that (7. E. Stevens, who I understand was formerly a partner
of Prescott, started to use the name "Edison Phonograph : .
Agency" after dissolving partnership with- Prescott, and I
directed that such use be stopped, and he accordingly stopped
(3)
| it. I never in any- way authorized Prescott to use the (
| name "Edison Phonograph Agency", and never knew that he had
| used it until about September, eighteen hundred and ninety-
i eight. As soon as X heard of it X made objections. I had
an interview with Prescott about that time and told him that
j he must not use that business name. He objected and wished
; to use it, and I said to him about as follows: "I don’t
■: want you to use that name. I don't know whether I can :stop
: you in law, but I will if I can." I recognize that goods
' manufactured by me can properly be designated with my name
■ as showing their place of manufacture, and I make no objec-
; tion to any such use of my name as descriptive of goods pur-
! chased of me and sold by any dealer, but I object to the use
' of the word ’.’Agency" in connection with my name if it in
'any way tends to deceive the public by making them believe
:! that that dealer is my afrent or represents me in any way
■]■ other th.-m simply as a seller of my inventions. I am a
:: large stockholder in the national Phonograph Company. It
!j owns many of my patents and sells goods manufactured under
:j those patents, but X am not an officer in the Company and
i have no knowledge of the details of the selling part of its
j business. My headquarter* at present are at my laboratory
;| at West Orange, and all telephones and telegrams to me are
■j received by my Secretary, John P. Randolph. I am informed
by him that he does not remember any instances where any
telegram or cable was repeated over the telephone to my
i laboratory by Prescott or anyone else connected with the
General Electric Company in Mew York, nor any instance where
j any opened telegram or cable was forwarded in that way to me
i; by mail. There is absolutely no truth in the insinuation con-
ij tained.in the fifth paragraph of Prescott’s answer which .
! states that I combined with others to break up his business
if and ruin him and secure a portion of his business, for myself
; or others. The statement is absurd on the face of it,' as
' •' ' (4)
| the companies in which I am interested, vis: the Edison .
| Phonograph Works and the national Phonograph Company, manu¬
facture and sell phonographs , and they are made and sold by
no one else, so that the larger business Prescott did, the
j more profit accrued to the national Phonograph Company, from
;i which he had to buy them, and to the Edison Phonograph Works,
j who are the exclusive manuf octurers.
i The allegations in paragraph eight in Prescott's answer
\ are entirely untrue. I have not now and never have had any
connection, directly or indirectly, with the phonograph
business carried on at Ho. 174 Fifth Ave., Hew York City. It
is owned and carried on by one Thomas <T. Moncks, who is a
: dealer in talking machines and supplies of the same character
1 as hundreds of others throughout the United States. When he
: first started the business there he used, without my perrais-
: sion, the name "Edison’s Phonograph Agency". Ho. was at once
notified by my general counsel in Hew York, Hr. Richard H.
Dyer, that the use of that name could not be permitted, and,
as 1 am assured, then discontinued its use. X have annexed
to this affidavit a copy of the letter insisting on the dis-
■: continuance of the use of that name ovj&j
■ Sworn to and subscribed this 23rd
day of September, A.D., 1899, at
West Orange, before me.
&
[ATTACHMENT]
(Copy)
How York, May 29, 1899.
n' Thomas j.Moncks, Esq. ,
174 Sixth Avenue,
City.
Dear Sir
We are informed by our client, Mr. Edison, that you
are using his trademark signature for advertising- purposes at
your stord in this city. You are doubtless aware that you are
violating Mr. Edison's rights in his trademark by this use. We
are instructed to require you to remove the sign at once. We
feel that in view of your business relations with the national'
Phonograph Company there should be no occasion for legal action
: ln this COnnection- We . suggest that you comply with our request
at once and notify us that you have done so.
Your s truly,
Dyer, Edmonds & Dyer.
( S.O.E.)
[ATTACHMENT!
(Copy)
Hew York, June 27, 1899,
Mr.S. 0, Edmonds,
. Ifcrer Edmonds & Dyer, 31 Nassau St., City.
My dear Mr. Edmonds:- ,
Replying to your esteemed favor of May 29th. ,
I beg to say that your suggestion has to. en complied with in full
Yours very truly,
T.J.Moncks.
[ATTACHMENT!
! In Chancery of New Jersey )
Between )
Thomas A. Edison )
Complainant ) ON BILL &c .
and ) Affidavit of
| Frederic M. Prescott ) John F. Randolph.
Defendant. )
I State of New Jersey :
: ss.
] County of Essex
John F. Randolph , being duly sworn
I; according to law on his oath says: I am the Secretary of
Mr. Thomas A. Edison and am employed at his laboratory in
; Went Orange. That has been his principal office for the
' last four or five years. I receive all telephones for him,
| also open all telegrams and correspondence. I do not remember
' ever having received over the telephone the contents of any
; telegram or cable from Frederic H. Prescott in 7Tew York or
j from any person connected with the General Electric, nor do
j 1 remember receiving any opened telegrams or cable by mail,
| except one received October twenty-ftinth, eighteen hundred
and ninety-eight, from Prescott. If it had ever been the
custom of Prescott or anyone connected with the General
Electric Company to open telegrams and cables and repeat them
by telephone or forward them by mail, I should certainly
have known it, and I. never knew of such a thing being done.
Sworn to and subscribed :
NATIONAL PHONOGRAPH CO.,
EDISON LABORATORY,
ORANGE June 26,1900.
Howard W. Hayes, Esq. , . . .
Prudential Building,
Newark, N. J.
Dear Sir:
I brought up and discussed with Mr. Edison yesterday the
Prescott matter, about which I had a conversation last week with Mr.
E. N. Colie, Mr. Prescott's attorney. Mr. Edison is firmly of the
opinion that it would not he judicious or wise for us to again place
Mr. Prescott on our hooks as a dealer or johher. Of course what he
would want would he to he put in on a johher basis, hut now that we
are running along in a very smooth manner, we do not think it v/ould he
wise to have any further disturbing elements come in. This, of course,
is in accordance v/ith our under standing.
Inasmuch as you represent Mr. Edison in this litigation, the
question with me is whether I should now take it up direct with Mr.
Colie or not. My opinion is that you should either confer with Mr.
Colie or advise him of the decision reached. I presume that he
will then go further into the matter v/ith you, hut I do not see; that
v/e would reach any other ultimatum. We do not care to do business with
Mr. Prescott, as our past experience v/as not satisfactory.
If it is your desire that I write Mr. Colie , kindly intimate what
sort of a reply I should make, or if you decide to take the matter up
v/ith him direct, let me know.
■weg/iot
Legal Department Records
Phonograph - Case Files
Thomas A. Edison et al. v. New York Phonograph Company et a/.
New York Phonograph Company v. Siegel-Cooper Company
This folder contains material pertaining to the suit brought by Edison, the
National Phonograph Co., the Edison Phonograph Works, the Edison
Phonograph Co., and Frank L. Dyer against the New York Phonograph Co.,
James L. Andem, and others in the New York Supreme Court for the County
of Westchester. The case was initiated in December 1 909 and involved a
dispute over the settlement reached in New York Phonograph Company v.
National Phonograph Company etal., executed on April 9, 1909. The selected
items consist of the bill of complaint and the two contracts of settlement in
dispute. Also included is Frank L. Dyer's deposition in another case, New York
Phonograph Company v. Siegel-Cooper Company, initiated in April 1 909 in the
New York Supreme Court for the County of Westchester, which discusses the
protracted litigation between the New York Phonograph Co. interests and the
Edison interests. Among the documents not selected are affidavits and exhibits
in the printed record for Thomas A. Edison et al. v. New York Phonograph
Company et al. Related material can be found in the case files for New York
Phonograph Company v. National Phonograph Company etal.
\
h
SUPREME COURT,
COUNTY OF WESTCHESTER.
THOMAS A. EDISON, NATIONAL PHONOGRAPH COMPANY, EDISON
PHONOGRAPH WORKS, EDISON PHONOGRAPH COMPANY mid
FRANK L. DYER, '
; Plaintiffs,
_ . against
NEW YORK PHONOGRAPH COMPANY, JAMES L. ANDEM, individually
and as a director mid as Secretary of New York Phonograph Company ■
WILLIAM FAHNESTOCK, individually and as a director and ns Treas¬
urer of New York Phonograph Company, LEWIS J. MULFORD, JAMES
SLATER, JOHN II. PRALL, JOHN P, HAINES and HUGH M. FUN- •
STON, individually and as directors of New York Phonograph Company,
and JOHN C. TOMLINSON, MILLARD F. TOMPKINS and JOHN C.n
, • TOMLINSON, Jr., as copartners, -
Motion for Injunction Pendente Lite and Papers
Submitted in Opposition and in Reply.
EDWARD W. HATCH,
GEORGE M. CLARKE,
Of Counsel.
DAVID LEVENTRITT,
HAROLD NATHAN, .
Of Counsel.
WILLIAM D. GUTHRIE,
Of Counsel.
ROBINSON, BIDDLE & BENEDICT, Esqs.;
New* York City.
LEVENTRITT, COOK & NATHAN, Esqs.,
Attorneys for certain defendants,
New York City.
GUTHRIE, BANGS & VAN SINDEREN, Esqs..
INDEX.
Moving Papers :
Restraining Order...'. . . . . .
Summons _ _ _ _
Complaint . .
Contract of Settlement (Exhibit A) . .
" " “ ( “ B) .
Affidavit of George M. Clarke _ _
Undertaking on Injunction .
'Papers in Opposition to Motion :
James L. Andem (First Affidavit)...... .
Millard E. Tompkins (First Affidavit) .
John 0. Tomlinson ( " “ ) - -
William Fahnestock ( “ “ ) -
Millard F. Tompkins (Second “ ) .
John 0. Tomlinson ( " )-----
James L. Andem ’ ( " “ ) -
William Fahnestock (Answer)..— . .
New York Phonograph Co. (Alleged Answer).
Jteply Papers :
George M. Clarke (Affidavit of) _ _
William E. Hanna ( " “) . .
Frank L. Dyer ( “ " ) .
William Pelzer ( " " ) . .
Joseph F. McCoy ( " “ ). .
Edward W. Hatch ( “ “ ) _ _ _ ...
Principal Exhibits :
Contract of Settloment-S105,0l)0 (Exhibit A)
Contract of Settlement— 820,000 ( “ 15)
Indemnity .Agreement . - .... - - ......
Hyman’s Slot Machine Contract _
K*m^'
MOVING PAPERS.
Restraining Order and Order to Show
Canse why Injunction Pendente Lite
Should not Issue Herein.
(Stout
COUNTY OP WESTCHESTEE.
Thomas A. Edison, National Pho¬
nograph Company, Edison Pho¬
nograph Works, Edison Phono¬
graph Company and Frank L.
Dyer,
Plaintiffs,
against
New York Phonograph Company,
James L. Andem, individually and
as a director and os Secretary of
New York Phonograph Com¬
pany, William Fahnestock, indi¬
vidually and as a director and as
Treasurer of New York Phono¬
graph Company, Lewis J. Mul-
ford, James Slater, John H.
Prall, John P. Haines and
Hugh M. Fdnston, individually
and ns directors of New York
Phonograph Company, and John
0. Tomlinson, Millard F. Tomp¬
kins and John 0. Tomlinson, Jr.,
ns copartners,
Defendants.
It appearing to my satisfaction from the complaint
in this notion, .duly verified on the 4th day of Deoem-
SUPREME COURT,
County of Westchester,
Thomas A. Edison, National Phono¬
graph Company, Edison Phono¬
graph Works, Edison Phonograph
Company and Frank L. Dyer,
Plaintiffs,
AGAINST
New York Phonograph Company,
Jameb L. Andem, individually and
as a direotor. and as Seoreturv
of New- York Phonograph Com¬
pany, William Fahnestock, indi¬
vidually and as a direotor and as
Treasurer of New York Phono¬
graph Company, Lewis J. Mul-
ford, James Slater, John H.
Prall, John P. Haines and Hugh
M. Funston, individually and as
direotors of New York Phonograph
Company, and John C. Tomlinson,
Millard F. Tompkins and John C.
Tomlinson, Jr., ns copartners,
To the above-named Defendants :
You and each of you are hereby summoned to ans¬
wer the complaint in this action, and to serve a copy
of your nnswor on the plaintiff’s attorneys within
twenty days after the service of this summons, exclu¬
sive of the day of service ; and in case of your failure
to appear, or answer, judgment will be taken against
SUPREME COURT,
County op Westchester.
ddle & Benedict,
Attorneys for Plaintiffs,
it Office Address,
Wall Street,
gh of Manhattan,
New York City.
Thomas A. Edison, National Phon¬
ograph Company, Edison Phono¬
graph Works, Edison Phonograph
Company and Frank L. Dyer,
Plaintiffs,
AGAINST
New York Phonograph Company,
James L. Andem, individually and
as a direotor and as Seoretary of
New York Phonograph Company,
William Fahnestock, individually
and ns a director and ns Treasurer
of New York Phonograph Com¬
pany, Lewis J. Mulfoiid, James
Slater, John H. Prall, John P.
Haines and Hugh M. Funston,
individually and as directors of
New York Phonograph Company,
and JonN C. Tomlinson, Millard
F. Tompkins and John C. Tomlin¬
son, Jr., ns copartners,)
Defendants.
Complaint.
The plaintiffs above named, by Robinson, Biddle <fc
Benedict, their attorneys, complnin of the defendants
and respectfully show to this Court :
I. That at all the times hereinafter mentioned each
of the plaiutiffs, National Phonograph Company, Edi¬
son Phonograph Works and Edison Phonograph
Company was and still is a foreign corporation duly
I created and existing under and by virtue of the laws of
the State of New Jersey.
II That at all the times hereinafter mentioned, the
defendant New York Phonograph Company was ana
still is, a corporation duly created and existing unto
and b^ virtue of the laws of the State of York,
having its principal ollice at Tarrytown, in sail
of New York; that the defendant James L. Andem
at the times hereinafter mentioned was, and, on
0 information and helief, still is, the Secretary and a
director of the said New York Phonograph Company,
that the defendant William Fahnestock was the Treas-
urer and n director of said New York Phonograph
Company ; and that the defendants William Fahnes¬
tock, Lewis J. Mulford, James Slator, John H. Prall,
John P. Haines and Hugh M. Funston were on April
3, 1909, and for about two weeks thereafter directors
of said New York Phonograph Company.
II III. That the defendant John C. Tomlinson, Millard
F. Tompkins and John C. Tomlinson, Jr., are and at
all times hereinafter mentioned were attorneys and
counselors-at-law of the State of New York, and en¬
gaged in the praotice of law as copartners at No. 15
Broad Street, in the Borough of Manhattan, City of
New York, under the firm name of Tomlinson, Tomp¬
kins & Tomlinson.
IY. On the 3rd day of April, 1909, the plaintiffs
32 herein, noting through the plaintiff Frank L. Dyer,
entered into a coutraot with the defendant New York
Pkonogrnpli Company and the defendant JameB L.
Andem, individually and noting for and in behalf of the
Kansas Phonograph Company, Ohio Phonograph Com¬
pany, State Phonograph Company of Illinois, Kentuoky
Phonograph Company, Missouri Phonograph Company,
Minnesota Phonograph Company and Wisconsin
Phonograph Company, a oopy of which is hereto an¬
nexed marked Exhibit A which the plaintiffs pray may
be taken to be a part of this their complaint.
V. That in and by said contract the defendant New 33
York Phonograph Company covenanted that upon the
payment by the plaintiffs herein of the sum of four
hundred and five thousand dollars (S‘l 05,000), as in
snid contract provided, and the performance by said
plaintiffs of all the covenants and agreements on their
part in said coutraot to be kept and performed, the de¬
fendant Now York Phonograph Company would,
among other things, assign to the plaintiffs such por¬
tion of the number of shares of the capital stock of the
defendant New York Phonograph Company as might 34
bo possiblo, not less, however, than two thousand
(2,000) slinres, and further covenanted and agreed that
said stock should bo turned over to the plaintiffs within
forty-eight hours after tho payment, to the holders of
record of said stock, or dividends resulting thereon
from the settlement set forth in said contract.
VI. That in and by said contract the defendant New
York Phonograph Company fuither covenanted nnd
agreed that it would deliver, in so far ns it legally 35
could, to such persons as plaintiffs should designate,
all the books, minutes nnd papers of said New York
Phonograph Company then held by said Company or
by defendant James L. Andem, nnd would also procure,
so far as possible, the resignations of tho Board of
Directors and oflicors of said New York Phonograph
Company, and would aid in tho transfer of the control
of snid New York Phonograph Company to such per¬
son or persons ns those plaintiffs should designate.
On information and belief, that tho defendants le- 36
gaily could have, and can now legally transfer and '
deliver the hooks, minutes nnd papers of said New
York Phonograph Company nnd the resignations of
the Board of Directors and officers of snid New York
Phonograph Company nnd aid in the transfer of the
control of said Company to the nominee or nominees'
of the plaintiffs, ns required to do iii nnd by the terms
of said agreement.
VII. That the plaintiffs have performed eaoli and
every covenant and agreement on their part to be per-
10
87 formed i|i and by said contract, and did on or about
the 8th day of April, 1909, pay to the defendants Now
York Phonograph Company and to James L. Andera
the sum of Four hundred and fivo thousand dollars
(8405,000), ns in said agreement provided.
On information and belief, that the defendant New
York Phonograph Company, on or about the 9th
day of April, 1909, paid to its stookholdors as
and for a dividend from and out of its portion
of the said sum of Four hundred und five thou-
88 sand dollars (8405,000) so paid by the plaintiffs,
pursuant to said contract, the sum of Niue dollars
(89) per share ; that tile defendant William Fahnestook
was then the Treasurer of defendant New York Phon¬
ograph Company and made and Bigned the cheeks to
the stockholders of said Company or paid over the
money to them as and for the said dividend.
On information and belief, that all the directors and
officers of said New York Phonograph Company did
on or about April 9th, 1909, make and deliver their
89 resignations as suob directors and officers, dated about
April 19, 1909, and that tho same were plnced in the
possession of tho defendants Tomlinson, Tompkins &
Tomlinson, for delivery to plaintiffs pursuant to the
said contraot Exhibit A hereof ; that said Tomlinson,
Tompkins & Tomlinson noted as attorneys for the de¬
fendant New York Phonograph Company upon the
settlement refereed to in said contraot and continued so
to act but without any authority from the defendant
New York Phonograph Company for so doing.
40
YIII. That the plaintiffs have repeatedly requested
the defendant New York Phonograph Company and
also the defendants Tomlinson, Tompkins & Tom¬
linson to turn over to tho plaintiffs or to their at-
. torneys the resignations of said officers and directors
of the defendaut New York Phonograph Company so
held by them ns aforesaid, but that they have hitherto
wholly neglected aud refused and do now uegleot and
refuse to comply with said request.
IX. That plaintiffs have hitherto designated to tho 41
defendant New York Phonograph Company and to
tho defendants Tomlinson, Tompkins & Tomlinson,
their attorneys Messrs. Itobinson, Biddle & Beuodiot,
of No. 79 Wall Street, New York City, ns the persons
to whom delivery should bo made by said New York
Phonograph Company of its books, minutes and
papers as in said contract provided, and ns the
persons to whom should also bo delivered the resigna¬
tions of the directors and officers of said New
York Phonograph Company as in said contract provided, 42
and as tho persons whom the said New York Phonograph
Company should aid in securing the transfer of the
control of said New York Phonograph Company.
X. That after repeated requests the defendant New
York Phonograph Company did, in the month of No¬
vember, 1909, cause to be delivered by said defendant
Tompkins to the plaintiffs’ said attorneys certificates
for two thousand two hundred and two (2,202) shares
of the capital stock of said Company, endorsed in blank, 43
but said New York Phonograph Company aud the de¬
fendaut officers and directors of said company have
neglected and refused and still neglect and refuse to
transfer said shares of stock upon the books of the said
company, or to issue new certificates of stock in ex¬
change therefor to the said plaintiffs or to their nom¬
inee or nominees, although often requested so to do :
that plaintiffs have caused diligent efforts to be made
to have said certificates transferred upon the books of
the said oompauy und new certificates issued therefor, 44
but have been unable to find any officers of the New
York Phonograph Company in the State of New York
authorized to, or who would effect such transfer and
exchange, either at the Company’s principal office or
at the office of the defendants Tomlinson, Tompkins
& Tomlinson, or elsewhere, and plaintiffs are advised '
and believe, and therefore allege, that until said stock
of defendant New York Phonograph Compnny is prop¬
erly transferred to the plaintiffs or to their nominees
pursuant to the provisions of said agreement, and new
13
45 certificates are issued therofor, these plaintiffs will be
unable to vote said stock at the meetings uf the stock¬
holders of said company, or to have any voice in the
management and control of its affairs, or in the elec¬
tion of its directors and officers, ns only stockholders
of record uro entitled to voto at such meetings.
XI. That plaintiffs have heretofore domnuded of de¬
fendant New York Phonograph Company and nlso
of the defendants Tomlinson. Tompkins & Tomlinson
46 that said New York Phonograph Company forthwith
carry out and perform all its covenants and agreements
in said contraot contained on its part to be performed,
but that said company lias at all times neglected and
refused, and still neglects and refuses to - properly
transfer to the plaintiffs or to their nominees the
shares of the capital stock of said New York Phono¬
graph Company, as provided by said contract, and
the defendants have also neglected and refusod, nnd
still negloct and refuse to deliver to Messrs. Robiuson,
47 Biddle & Benedict, the persons designated by plaintiffs
os aforesaid pursuant to the terms of said contraot, the
books, miuutos and papers of said New York Phono¬
graph Company mentioned in said contract, and have
neglected and refused, and still neglect nnd refuse to
aid the plaintiffs’ said nominees in the transfer of the
control of said New York Phonograph Company, nil
in violation of the covenants and agreements contained
in said contract on the part of said New York Phono¬
graph Company to be performed.
48 On information nnd belief, that the defendant James
I. Andem, who claims to be Secretary of the defend¬
ant New York Phonograph Company, and its other
alleged officers liuvo remained away from the office of
said Company in this State, nnd have absented them¬
selves from the State or kept themselves conoealed
therein for the purpose of avoiding the plaintiffs herein
and their attorneys and preventing them from secur¬
ing the transfer of the control, books, minutes and
papers of the Company, and of said two thousand two
hundred: aud two (2,202) shares of the capital stock
of the Company pursuant to the terms of the agree- 49
me'nt Exhibit A.
XII. Plaintiffs further show that immediately
after the payment of the four hundred aud five
thousand dollars ($405,000) hereinbefore mentioned
by the plaintiffs to the defendants New York Phono¬
graph Company and James I. Andem, one Samuel
F. Hyman, an attorney nnd counselor-at-law of
this Stnte, brought a proceeding in this Court to have
his attorney’s lien adjudged in some four hundred 50
cases brought in this Court by New York Phonograph
Compnuy ns plaintiff against various jobbers aud
denlers in Edison phonograph supplies in the State of
New York, in which actions said Hyman appeared as
attorney 'of record for the plaintiff', all of which cases
were settled by the parties thereto simultaneously
with the settlement set forth in the contract Exhibit
A, by a contract in writiug dated April 3rd, 1909, a
copy of which is hereto annexed marked Exhibit B,
which plaintiffs pray may be taken to bo a part of this 61
their complaint, and on the consummation of the
settlement- of said last-mentioned suits theso plaintiffs
paid to the defenduut New York Phonograph Company
the sum of twenty thousnnd dollars ($20,000), in addi¬
tion to nnd apart from the sum of four hundred aud
five thousand dollars ($405,000) hereinbefore men¬
tioned ; that said proceeding so instituted by Samuel
F. Hyman, Esq., 1ms been heard and submitted, but
no decision has as yet been rendered therein.
On information nnd belief, that the defendants 52
threaten and intend to take legal action in snid
Hyman’s proceeding in behalf of nnd hi '.the name of
Bnid New York Phonograph Company, ■ and also
threaten and intend to act us officers, directors, at¬
torneys and agents of said New York Phonograph
Oompany in the management and control of its affairs,
notwithstanding their resignations mnde and delivered
as aforesaid, and without the consent of these plaint¬
iffs or their nomiuee or nominees us stockholders or
otherwise, mid contrary to their wishes, and if per-
53 m it ted so to do, injustice imd irreparable damage and
injury will result to the plaintiffs therefrom, for which
they will have no adequate remedy at law.
XIII. That the shaves of stock of the New York
Phonograph Company are of uncertain value and can¬
not he purchased in the open market and if nt least
two thousand (2,000) shares of its stock are not forth¬
with transferred to these plaintiffs or to their nominee
or nominees upon the books of said Compnny, and new
51 certificates issued therefor, as provided in and by the
contract (Exhibit A), the plaintiffs will suffer gront and
irreparable loss for which money damages would not
be adequate compensation ; that if tho two thousaud
(2,000) or more shares of stock of defendant New York
Phonograph Company now stood in the name of tho
plaintiffs, or their nominee or nominees upon the books
of the Company, these plaintiffs would control tho elec¬
tion of a Board of Directors of said Compnny and the
management and disposition of its affairs ; that the
66 defendant New York Phonograph Company lias not
sufficient assets in the State of New York or else¬
where, and is and would be unable to respond in dam¬
ages for the breach of its said contract (Exhibit A) ;
and that unless said contract is specifically performed
the benefits under the same will not enure to the
plaintiffs, in whose favor it was made.
Wherefore, the plaintiffs ask the judgment of this
6(i 1. That the defendant New York Phonograph Com¬
pany, its officers, directors, servants and agents, be
ordered aud directed to transfer to the names of the
plaintiffs, or to the unme or names of their nominee or
nominees upon the books of the Company the above
mentioned two thojmand two hundred and two (2,202)
shares of the capital stock of that Company, and" to
.'issue a now "certificate ' or new certificates of stock
therefor to and in the'hamo of such person or persons
as the plaintiffs may direct, and that a mandatory in¬
junction order be issued therefor.
2. That the defendant New York Phonograph Com- 57
pany, its officers, directors, agents, attorneys and ser¬
vants, and the other defendants, and eaoh and every of
them, be ordered and directed to deliver to the plaint-
iffs’ attorneys,' Messrs. Bobinson, Biddle & Benediot,
ollthe books, minutes and papers of the defendant
New York Phonograph Company, and the~resighntionB
of the directors aud officers of said New York Phono¬
graph Compnny, and that a mandatory injunction order
1 be issued therefor.
3. That tho defendant New York Phonograph Com- 58
pany, aud its officers, directors, servants and agents,
be ordered and directed to execute any and all proper
instruments in writing for the purposo of conveying
and transferring to the plaintiffs or to their nominee^ or
nominees, the control of said New York Phonograph
Company.
4. That the defendant New York Phonograph Com¬
pany, its officers, directors, agents and servants, and
the other defendants, and each and every of them, be
perpetually enjoined and restrained from transferring 69
orati mpting to tir> si i the control, osulw mi hi es,
papers or other property of the defendant New York
Phonograph Compnny to any person or persons other
than these plaintiffs or their nominee or nominees
.pursuant to said contract (Exhibit A) ; and from in¬
stituting or prosecuting any action or proceeding nt
jaw or in equity, or instituting or prosecuting any
appeal, in the name of or in behalf of the defendant
New York Phonograph” Company without the consent
of these plaintiffs j and -from taking any action what- 60
everjn the name of or in "behalf of said_ New_York
Phonograph Company in violation of" plaintiffs’ rights
as procured by said " contract; and that the said de¬
fendants and each of them be enjoined and restrained
from doing or suffering or permitting to be done any
of the acts above mentioned during the pendenoy of
this aotiou and until the further order of the Court iu
the premises.
5. Thnt the defendant New York Phonograph Com¬
pany, its officers, director's, and agents, be enjoined
holders of said Company.
7. And that the plaintiffs have such other and
further relief or both in the premises ns may be just
and equitable, and that the plaintiffs reoover of the de¬
fendants their costs of this aotiou.
Bobinson, Biddle & Benedict,
Attorneys for the plaintiffs,
Office and Post Office Address :
No. 79 Wall Street,
Borough of Manhattan,
New York City.
contents thereof, nnd that the same is true of his own
knowledge, except ns to the matters therein stated to
be alleged upon information and belief, and as to those
matters, he believes it to be true. gg
(Signed) Fuank L. Dyer.
Sworn to before mo this 4tli )
day of December, 1909. j
Eli K. Chandler,
Commissioner for the State of New York for
the Stnte of New Jersey, residing at
[Seal.] Atlantic City, N. J.
Commission expires March 1st, 1913.
State of New Jersey, 1
County of Atlantic, J ■ '
Frank L. Dyer, being duly sworn, according to law,
deposes and says :
That he is the President and an officer of the Na¬
tional Phonograph Company, one of the oorporations-
plnintiffs in the above entitled action;, that he is the
Vice-President nnd an officer of the Edison Phonograph
Company, one of the corporations-plaintiffs in the 68
above-entitled aotiou ; and that he is the General Man¬
ager and an officer of the Edison Phonograph Works,
one of the oorporatious-plnintiffs in the above entitled
aotion.
That deponent has read the foregoing complaint nnd
knows the contents thereof, nnd that the same is true
of his own knowledge, except as to the matters therein
stated to be alleged upon information and belief, and
that as to those matters, he believes it to be true.
That the reason whv this verification is -not made bv
69 ££KS™£r' Pll0,nTaph Company and the
^ssE^ss-ssrsf
rj=3st-f
TO
Fjrpr&srxsrsiz
sswsSs^^r552---
71 of said contracts, and^ J" ^ *° tho “^ing
had by deponent with t]' M',,1’°1'SonnI “ommuuicationa
relating to all the matters set forth
complaiut. 01til ln fcIlG foregoing
Sworn to before me this .itln'81*^ FlUNK L- DveB-
day of December, 1909. (
Eli H, Chandleii,
72 (SEAL) mstat6 Of* New J ° °f Ne"’ Yol'k ‘he
Oi X^e?rS03'l'63icIinentAtl-‘io
Commission expires March 1, 1913.
State op New Tome,
County of New York,
GEonoE 1M. CLAnKE, being duly sworn, according to
law, deposes and says : •
That he is ono of the attorneys for all the plaintiffs
herein.
That each of the corporntions-plaintiff is a foreign
corporation organized and existing under the laws of
the State of New Jersey, and the plaintiff Thomas A.
Edison is a resident of Lewellyn Park, in the Stnto of n
New Jersey, and is not within the Stato of New York,
County of New York, which is the County where de¬
ponent resides.
That deponent has read the foregoing complaint and
knows the contents thereof, and that the same is true
to the knowledge of deponent, except as to the matters
therein stated to be alleged upon information and be¬
lief, and that as to those matters, he believes it to be
That all the material allegations therein are within 76
the personal knowledge of deponent.
Deponent further says that the grounds of his belief
as to all of the matters therein not stated upon his
knowledge are the original contracts mentioned in the
complaint marked Exhibits A and B, which wore drawn
by deponent and his associates and wore signed by all
the parties thereto and witnessed in his presence, and
which are in his possession, also information obtained
by deponent in the course of his duties ns attorney for
tho plaintiffs throughout their negotiations with the 76
defendants, which resulted in the said settlement and
the making of said contracts and the payment over to
the defendants by the plaintiffs of the moneys due
thereunder in deponent’s presenoe, and information
acquired by him as attorney for said plaintiffs in num¬
erous conferences with the defendants James L. An-
dum, 'William Fahnestock and Tomlinson, Tompkins &
Tomlinson.
Deponent further says that the reason why this ver¬
ification is not made by said plaintiffs is that, as above
77 stated, the plaintiff Thomas A. Edison is not within
the County of New York, whero deponent resides, and
that all of the corporations-plaihtiff are foreign cor¬
porations organized under and by virtue of the laws of
the State of New Jersey.
George M. Clarke.
Sworn to before me this 4th )
day of December, 1909. \
William F. Allen,
Notary Public,
78 New York County.
County Clerk’s certificate attached.
Exhibit A”.
Agreement, made this Third day of April, in the
year Nineteen Hundred and Nine, betweeu New York
Phonograph Company, James L. Andom, individually,
and James L. Andem, for and on behalf of the Kansas
Phonograph Company, the Ohio Phonograph Company,
the State Phonograph Company of Illinois, the Ken¬
tucky Phonograph Oompnny, the Missouri Phonograph
Company, the Minnesota Phonograph Company and 82
the Wisconsin Phonograph Company, parties of the
first part, and Frank L. Dyer, acting for and on behalf
of Thomas A. Edison, the Nntional Phonograph Com¬
pany, the Edison Phonograph Company, and the Edison
Phonograph Works, party of the second part, Wit¬
nessed) :
Whereas the above named parties of the first part
have brought suits in divers jurisdictions against the
interests represented by the party of the second part,
which suits are now pending ; and 83
Whereas the parties hereto have agreed to settle all
Buch differences, except the causes of action of the New
York Phonograph Company and any interests which
James L. Andem may have therein, nnd for which suits
have been brought by Samuel F. Hyman, as attorney
of record, and are now pending in the Court of Appenls
and in the Supreme Court for Westchester County, in
all of whioli suits the New York Phonograph Company
is plaintiff nnd various jobbers and dealers of the
National Phonograph Company in the State of New 84
York are defendants ; and
Whereas all the parties hereto have agreed to settle
and compromise all existing suits aud differences (ex¬
cept those hereinbefore meutioued, in whioli Samuel F. '
Hyman appears as attorney of record), in considera¬
tion of the payment of Four hundred and five thou-
saud dollars ($406,000) cash by the party of the sec¬
ond part to the parties of the first part, Five thousand
dollars ($5,000) of whioli Four hundred and five thou¬
sand dollars ($405,000) shall be paid upon the signing
sons as the party of the second part shall designate, all
the books, minutes, and papers of the New York Phon¬
ograph Company now either held by said Company or
said Andem, and will also prooure, as far as possible,
the resignation of the Board of Directors and Officers
of said New York Phonograph Company, and will aid
in the transfer of the control of said Company to such
person or persons ns the party of the second part shall
designate.
(e) Procure and delivery to the party of the second
part a good, valid and effective general release and
consent to this settlement executed by Tomlinson,
Tompkins & Tomlinson.
(f) Sign a stipulation consenting that the de¬
cree for an accounting heretofore entered in
the suit brought by it against the National Phono¬
graph Company and others in the United States Cir¬
cuit Court, for the Southern District of New York be
vacated, and that the injunction heretofore issued in
24
said suit be dissolved, aud that said suit be discon¬
tinued, without costs.
(rj) Exeoute a consent that all bonds given by any
of the parties represented by the party of the second
part hereto in any of the litigations hereinbefore men¬
tioned, or any other matters, shall bo cancelled of
record, except bonds in the suits heretofore men¬
tioned, wherein Samuel F. Hyman is attorney of
record.
(A) Execute in favor of the National Phonograph
Company a waiver of its portion of the fine directed to
be paid by the National Phonograph Company in the
contempt proceeding arising out of the alleged vio¬
lation of the above moutioued injunction.
(i) Procure and deliver to the party of the Beoond
part good, valid and effective general releases executed
by the New York Phonograph Company and James L.
Andem, individually, aud James L. Andem in behalf
of all the companies hereinbefore mentioned as repre¬
sented by him in favor of Frederick P. Ott and the Ott
Manufacturing Company, a corporation of the State
of New Jersey.
(j) Procure in writing a ratification by the Execu¬
tive Committee aud also of the Hoard of Directors of
the New York Phonograph Company of the matters '
herein set forth relating to this settlement.
Third : The said James L. Andem covenants and
agrees that, upon the payment of the sum of Four
hundred and five thousand dollars (5105,000), as here¬
inafter provided, and the performance by the party of
the second part of all the covenants aud agreements
herein contained ou his part to bo performed, he will
(a) Deliver to the party of the second part uu effect¬
ive and authoritative general release in favor of all the
interests represented by the party of the second pni-t,
executed by said Andem, whereby lie shall release to
the party of the second part all the rights, actions,
causes of notion, interests and olnims of every kind 1
■ owned, hold or assorted by him, in his own behalf or
in behalf of the following Companies : The Kansas
Phonograph Company, the Ohio Phonograph Company
the State Phonograph Company of Illinois, the Ken- 97
tuoky Phonography Company, the Missouri Phonograph
Company, the Minnesota Phonograph Company and
Wisconsin Phonograph Company, and any and all
other companies which said James L. Andem has au¬
thority to represent and settle for.
( b ) Deliver to the party of the second part good,
valid and effective assignments of all his right, title
nnd interest in and to any and all recoveries or rights
of recovery arising by virtue of his contracts with any
and all of said companies (except that he shall not be 98
required to assign any interest that he may
have in and to . any of the moneys paid on
the settlement contemplated by this agreement
or in and to any interest that he may have
the in suits proseouted in the Supreme Court of West-
ohester County by Samuel F. Hyman, and hereinbefore
referred to, wherein the New York Phonograph Com¬
pany is plaintiff).
(c) Deliver to the party of the second part consents
to discontinue all of said suits, except those wherein 99
the New York Phonograph Company is plaintiff, with¬
out costs, including the minority stockholder’s suit
brought by certain stockholders of the New England .
Phonograph Company in the New Jersey Court of
Chancery.
(d) Deliver to the said party of the second part an
agreement wherein he shall covenant that he will not
bring, directly or indirectly, in his own behalf, or in
behalf of others, any Buit or suits of any kind whatso¬
ever, against the party of the second part or any of the WO
interests represented by him herein, or be interested, •
direotly or ifidireotly, in any suoh snit. •
; (e) Ratify and confirm nil the releases to be given
by any or all of the parties of the first part, as herein
contemplated and to which suoh ratification and con¬
firmation may be desired by' the party of the second
part.
• (f) Procure and deliver to the party of
the second part good, valid and effective general
releases from the law :firm of Ferguson & For-
ud each of tliem, will oxocuto any aud all
blier papers that may bo reasonably necessary to
irry out the purposes of this settlement, and that
11 the papers relating to this settlement shall be
lbjeot to the approval of Hon. Edward W. Hatch
ud John 0. Tomlinson, noting ns couusel for the
ispective parties hereto.
Sixth : The parties hereto hereby agree that all of
10 moneys to be paid hereunder and all the
ivenauts and agreements to bo performed by any
i' all of the parties hereto, except whore a different
me is hereinabove expressed, shall be performed
April, 1909, at six o’oloclc P. M., unless the partie
hereto shall consent in writing to tho further extonsio
of tho timo of performance of this agreement. Til
closing of this contruot shall take place at the offic
of the National Phonograph Company, No. 10 Fiftl
Avenue, in tho Borough of Manhattan, City o
Now York, or nt suoh other place as the parties heroti
may hereinafter agree upon in writing.
Seventh : The party of the second part agree tlin
he will, upon tho closing of the settlement Bet fortl
in this agreement, deliver to tho parties of the firsl
part, or their duly authorized ngents, chocks in th<
aggregate amount of Pour hundred and five thousand
dollars ($405,000) provided that the parties of the firs!
part shall have performed all tho covenants and
agreements herein contained on their part to be
performed.
Eighth : It is mutually understood and agreed that,
if the papers prepurod by Tomlinson, Tompkins &
Tomlinson in connection with this settlement shall not
be approved by Edward AV. Hatch, counsel for the
party of the second part, aud the parties of the first
part refuse or are unable to have papers in the form
proposed by Edward W. Hatch signed aud executed,
nnd for this reason the party of the second part fails
to pay the Four hundred aud five thousand dollurs
($405,000) to be paid hereunder by or before Six
o’clock P. M. on April 9, 1909, then this agreement
shall be null and void, and the Five thousand dollars
($5,000) paid hereunder by the party of the second
part to the parties of tho first part shall bo returned to
said party of the second part, and the rights of • the
parties hereto shall be the same as they would have
been had this agreement never been made.'
In witness whereof the New York Phonograph
Company has oaused these presents to be executed by
James L. Andern, its duly authorized agent, and its
corporate seal to be hereto affixed by its Secretary,
and the remaining parties to this ncreomont lmve
109 signed and sealed the same the day and year first
above written,-
New York Pjionoohapii Company,
By James L. Andem, Secrotary.
James L. Andem, |l. s. ]
Individually and for the Phonograph
Cos. mentioned in the first para¬
graph of this agreement as being
represented by him.
Frank L. Dyer, |l. s.]
110 For and on belmtf of Thomas .A.
Edison, National Phonograph
Company, Edison Phonograph
Works and Edison Phonograph
Company,
In the presence of :
Geo. B. Allen.
Jane M. Laweenoe.
$ Corporate Seal. )
l N. Y. Phon. Co. J
.Agreement, made this 3rd day of April, in the year
Ninotoeu Hundred and Nino, by and botweon New
York Phonograph Company, a corporation of the State
' of New York, party of the first part, and Frank L.
112 Dyer, acting in behalf of Tliomns A. Edison, the Na¬
tional Phonograph Company, the Edison Phonograph
Company and the Edison Phonograph Works, party of
the second part, witnesseth :
Whereas the New York Phonograph Company has
heretofore brought several hundred suits in the Su¬
preme Court of the State of New York, for Westchester
County, through Samuel F. Hyman, as attorney, against
29
now pending in said Court and also in the Court of 113
Appeals of the Stnte of New York ; and
Whereas the parties to this agreement desire that
all of said suits shall be compromised and settled and
all of said notions discontinued, upon the payment of
the sum of Twenty thousand dollars ($20,000) cash by
the party of the second part to the party of the first
part;
Now, therefore, for and in consideration of
the mutual covenants and agreements herein
contained and of the sum of One dollar each to the 114
other ill hand paid, the receipt of whioli is hereby
acknowledged, the parties hereto hereby agree as foi-
Fihst : The party of the first part will procure and
deliver to the party of the second part, upon the pay¬
ment of the sum of Twenty thousand dollars ($20,000)
by the party of the second part to the party of the first
part, on or before April 9, 1909, at six o’clock P. M.,
consents to discontinue ench and all of said suits now
pending in the Supreme Court for Westchester County 116
and in the Court of Appeals of the State of New
York in which the party of the first part is plaintiff
executed by the party of the first part. (But nothing
herein contained shall be construed as an obligation
on the party of the first part to deliver to the party of
the second part the consent of the said Samuel F.
Hyman to the discontinuance of said suits.)
Second ; The party of the first part further cove¬
nants thnt upon the payment of the sum of Twenty
thousand dollars ($20,000) in the manner aforesaid, it 116
aviII procure and deliver good and effective general re¬
leases running to all of said jobbers and dealers in
said suits, whereby they shall be released from any
ami all causes of action for which the said notions are
now pending agaiust them.
Third ; The party of the first part, represents to the
party of the second part the only contract existing
between the party of the first part and Samuel F.
Hyman providing for the prosecution of said suits
agaiust jobbers and dealers of the National Phono¬
graph Company is contained in the following letler :
“ New York Photograph Company.
April 19, 190G.
"'Samuel F. Hyman,
302 Broadway,
Now York City.
“ Dear Sir :
" You are lieroby rotniued as counsel for tbi:
company to bring and prosecute actions or pro
ceediiigs ngainst such parties as we may indicati
to you, to recover from (hem, damages for viola
tion of our exclusive phonograph contracts foi
the State of New York, such suits to bo brough
in the name of this company at White Plains oi
elsewhere. As a compensation for your sorvicei
ns attorney, you will receive fifty per cont. of th<
total nrnonnt of money collected ns the result ol
such suits or otherwise, together with the costs
recovered. All the expenses of such prosecutions;
however, are to be pnid by you.
" James L. Andem,
General Manager.”
(Seal of Now York Phonograph Company)
Attest :
H. M. Funston,
Vice-President.”
And that no other contract or agreement exists be¬
tween said Samuel F. Hyman in relation to said suits,
and that the said Hyman has always acted and is now
acting pursuant to the aforesaid letter ; that the said
Hyman lias pnid or onused to be paid all the expenses'
in said suits, and that the party of the first part has
pnid no material part, if any, of suoli expenses.
Upon such representation the party of the
second part will, upon the consummation of
this contract, deliver to the party of the first part
an indemnity agreement under which the Na¬
tional Phonograph Company will agree to indemnify
the party of the first part ngainst any damage whioh
it may sustnin by reason of any recovery whioh said
Samuel F. Hyman may obtain on account of profes-
New York Phonograph. Company,
Plaintiff,
Answering Affidavits of
Prank L. Dyer , Melville Church,;
",ght Macdonald and Joseph F.
Robinson, Biddle & Benedict,
Attorneys for Defts
is hereby admitted, this
S' I
I i
Robinson, Biddle & benedict,
, y
HEW YORK SUPREME COURT ,
COUNTY 0 Y WEBT CHESTER.
How York Phonograph Company, :
Plaintiff, :
-against- !
Slogol-Coopcr Company, J
Defendant, t
STATE 0? NET YORK, )
: ss:
COUNTY OP HEW YORK, )
PRANK I» DYER, being duly sworn, depones and
Bays:
That he roaidOB in Hontolair, How Jersey, and
in the Prosident of the National Phonograph Company and
also general oounool to said Company and to Thomao A.
Edison, the Edison Phonograph Company and tho Ediaon
Phonograph Tories. Thvt ao such Prenident and General
Counsel ,ho had nolo and complete charge of tho matter
of negotiating and oonoluding tho recent settlement of all
the differences .litigated and unlltlgatod, existing
botwoon tho said Thomao A. Edison, Edison Phonograph Com¬
pany, Edison Phonograph Works and National Phonograph
Company and the varlouu indlvidualii allied with them,
on the one part, and the Hew York Phonograph Company,
Jamoa X» Andea, individually, James Andem for and on
behalf of the Konaao Phonograph Company, Ohio Phonograph
Company, state Phonograph Company of Illinois, kentuoky
Phonograph Company jMiaaouri Phonograph Company, Hinnc-
oota Phonograph Company, Wi sconoin Phonograph Company and
Hew England Phonograph Company (hereinafter referred to
an tlae “local companies*") , and various individuals, on
the other part.
That each of the above-mentioned local companion
had acquired an alleged exclusive franohine for the solo
of Edition phonographs und supplies for its respective
Dtato similar to tho aontraot ov/ned by the Now York Pho¬
nograph Company.
That in the yeura 19Q0 and 1901 James X. Andem
had entered into a oontraot with the Hew York Phonograph
Company and alao with each of the above-mentioned local
oompani'. a, whereby the said Andem was given the exclusive
right to proiseoute, compromise and settle any and all
suits, claims and demands of tho said Hew York Phonograph
Company and said looal companies against Thomas A* Edison,
tho Edison Phonograph Company, tho Edison Phonograph Works
and the National Phonograph Company and others and to ad¬
just tho same by auoh compromise or uettlejnfent. as tho Bald
Andom, acting under the ndvico of counsel, might doom ad-
vantages* The said Andem had agreed to pay all tho ooste
and expenses incidsnt to the prosecution of ouoh litiga¬
tion, and was to reoeive and retain as hla full compensa¬
tion thorofor a sum equal to sixty por cent, of any and
all moneys ho might reoeive or collect from any and all
of said parties by reason of the proseoution, settlomont
and adjustment of the righto » olaims and demands of eaoh
of the looal companies aforesaid (except the Kentucky
3
Phonograph Company, which agreed to give him forty por
oent. and the Ohio Phonograph Company, which, deponent
is informed, the said Andem owned outright and he would
therefore doubtleaareoeive the whole of any reoovery. it
might make. That acting under these contracts the said
Andom had brought a separate suit in the United States
Circuit Court for tho District of How Jersey in behalf
of eaoh of the foregoing local oompaniea, all of v/hloh
suits v/ere ponding at the time of tho settlement of the
negotiations hereinafter referred to, but hava sinoe been
discontinued pursuant to the Battlement agreements.
They were as follows:
1. Ohio Phonograph Company and the Bclioon
Phonograph Company (of Ohio), tkoir
successors and assigns,
Thomas A. Edison, Edison Phonograph Company,
Edison Phonograph Works and national
Phonograph Company.
8. Wioconoin Phonograph Company
-V0-
8a me Defendants,
3. Missouri Phonograph Company
-vo-
Same Defendants.
4, New England Phonograph Company
-vs-
Same Defendant!).
4
8. State Phonograph Company of Illinois
-ve-
Sano Defendants.
6. Minnesota Phonograph Company
Same Defendants.
7, Kentucky Phonograph Company
fV0-
Same Defendants.
8. Kansas Phonograph Company
-vs-
Sajao Defendants.
That, in addition to the foregoing, there wore
ponding in the United Staten Circuit Court, for tho
Southern District of Hew York, tho following suits?
9. Haw York Phonograph Company, complainant,
-vo-
Thomao A. X'diaon, Edison Phonograph Company,
Edison Phonograph Works and national
Phonograph Company, defendants
10. Hhsr York Phonograph Company, complainant,
-TS-
John S. Jones, Defendant.
(This auit had boon originally brought in the
Supremo court for Westoheotcr County and waa
removed by the defendant to tho Federal
Court).
11. John 2. Helm, Complainant,
«*vo-
How York Phonograph Company, impleaded with
American Oraphophone company ot al. , Dofondanta.
12. Hew England Phonograph company, Complainant,
-VB-
Jraes L. Andem, Elisha Camp and Louis Hioko,
DofondHnts.
And there were oIbo pending in the supreme Court
of the State of Saw York, for the County of Haw York,
the following silts:
13. national Phonograph Company, Plaintiff,
-re¬
new York Phonograph Company, impleaded
with Henry Durant Cheaver, Kxeoutor, eto. ,
Defend, ante,
(Thiss ouit involved tho question of tho
right to the ownership of some 101?
shares of the capital stock of the How York
Phonograph Company).
Id. Y/llliam Polser, Plaintiff,
Tames t. Andem, Defendant,
15, Hew England Phonograph Company, Plaintiff,
-v Ei-
Bray ton Ives ot al* , Defendants
And thoi-o was pending in the Supremo Court for
Kings County an antion entitled!
16. Lemuel E. Bvana, Plaintiff,
-vs-
How York Phonograph Company, Defendant.
That in addition to tho foregoing suite, there
were pending tho no-called Hyman suits, which aggregated
about 400 in number, and Jill of which were brought in tho
Supreme Court for Wootchcater County by the Hew York
Phonograph Company, plaintiff, against various jobboro
and doalorn in Edison phonographs and supplies in the 8ta.fi
of How York, defendants. The- same printed fora of com¬
plaint wan used in all 400 aultu and was almost a verba¬
tim copy of tho oomplaint prepared and uood by Hr, Camp a id
Mr. Hioko in tho federal suit brought by the How York
Phonograph Company against tha national Phonograph Company,
impleaded with othera, in tho Southern District of Hew
York. Tho same printed form of answer was interposed
in almost all of tho Hyman* suits.
s
The ouit brought in the United States Circuit
Court, for tho Southern District of Hew York by the New
York Phonograph Company, complainant, against l’homas A.
Edison, Edison Phonograph Company, Edison Phonograph
Dorics and National Phonograph Company, defendants had be oh
most bitterly contested 'oy the defendants from the day
it began,— l.o. , April Id, 1901,— down to the date of the
settlement. The volurnlnouo record that W.as made ha.Si-b.e.ejn
detailed in other affidavits submitted on this motion.
Elisha KT Camp was solicitor of record for the complain*
ant in tho litigation, and Louis Hicks was counsel for
complainant. Robinson, Biddle & 'tfard (which firm re¬
cently ohangod its name to Robinson, Biddle & Benedict)
acted throughout tho litigation as solicitors for tho
defendants.
In this connection deponent dowOB it only fair
to soy that throughout tho greater part of the litigation
the complainant * c ease was conducted practically single-
handed by its counsel, Louis Kicks, and to him, mors than
to any one else, is due the credit of achieving the vic¬
tory for the complainant which finally resulted in the
settlement of oil the pending litigations above mentioned.
Deponent is informed and verily believes that the said
Hicks had had a disagreement with the complainant shortly
before the settlement was effected, and in order that the
said Hlolcs might not in any way attempt to interfere with
tho carrying out of the settlement, the defendants agreed
with the said Kioks separately and apart, to pay to him, a
and did pay to him, in additionuto the $4D6,000 paid to
the 'Sow York Phonograph Company and James X, Atidttss above-
Hs*nti<med,th« «uts of $30,000.
After over four years of laborious work, Mr.
Nicks obtained in behalf or th® complainant in the lafct-
wentiened suit, on the 2nd day of Hay, 3. 90S, an interlocu¬
tory decree awarding an injunction against the defendant
National Phonograph Company, and directing an accounting
of the araflto made by it by reason of its wrongful
invasion of complainant's righto. Xhu defendants
appealed from thin decree to the United States Circuit
Court of Appeals far the Second Circuit, and gave a
bond to stay the iftcuanoe of an. injunction ponding appeal,
thereafter the decree appealed from wan in all respects
affirmed on the opinions of Haaol, 31, in the Court below,
and on March 26, 1906, a writ of injunction Issued out
of the Clerk's Office of the Unitod States Circuit Court
for the Southern District of Dew York, pursuant to the
aforesaid decree of May 2, 1905, as affirmed..
The complain ant had submitted a proposed decree- to .fudge
Hun el, broadly enjoining the defendant National Phonograph
Company from » oiling, etc., phonographs and supplies
therefor within the state of New York, and tho defendant®
had submitted a proposed decree enjoining the defendants
from celling, etc. , phonographs and supplies therefor
within tho State of New York In violation of the rights
of the complainant! under certain contracts as extended
bearing date October 12. lasa. between tho North Amedoan
Phonograph Company and tho Metropolitan Phonograph Company,
and also between ghomas A. Edison, tho Bdlaon. Phonograph
0
Company, the Edison Phonograph Works, thra North Amor loan
Phonograph Company and .Tobdb H. Xippinoott . and a oontraot
bearing date the 6th day of February, 1889. between the
North Anar loan Phonoaraph Company und John P. Heines*
and a oontraot bearing dato July 1. 1093. between oom-
plainant and the Worth American Phonograph Company.
judge Hanoi ehoae and. signed tho form proposed by defend¬
ant.
After the issuance of the injunction an afore¬
said, the ’rational Phonograph Company, at an expense of
thou otuids of dollars, eliminated, from itB manufacture of
phonographs, such patents as it was advised the complain¬
ant * n oontraot righto attached to and as to which patents
the Hatioiml Phonograph Company had been onjoinod as
aforesaid, and went on manufacturing phonographs and
soiling them f. o. b. oars ut Orange, Hew Jersey, under the
belief that it was not in any way disobeying the afore¬
said injunction.
To the surprise of deponent , complainant did not
proceed with the accounting which hod bum awarded to it
and which oovored tha ontlro business of the National
Phonograph Comp, any in Hew York State for a period of many
yearn, and which, therefore, might result in a big Judg¬
ment. Deponent rue oubeequcatly Informed that tho
reason complainant did not proceed with said accounting
was due to the fact that there had boon a disagreement
between the complainant and itB solicitor of record, Eliuh
K. Cwnp. Proceedings wore suboequently had in tho United
States Cirouit Court, for the Southern District of How
York, whereby tho said Camp was finally removed from tho
ouoe as nolioitor of record, and Honors, Tomlinson,
%
■
9
Tompkins & Tomlinson wore substituted in hiB stead.
Mr. Hicks continuod to act a a oounscl.
In the month of Juno, 1906, somo months prior
to Hr. Camp * a removal from the suit, the How York Phono¬
graph Company, through Hr. Samuel V, Hyman as attorney,
began to bring tho auits horoinboforo referred to in the
Supreme Court for Westchester Ceunty against the various
jobbers aril dealers in Sdiaon phonographs and supplies
iri the State of Hew York, which euito, at the time of
the settlement, amounted in number to about 400.
Only one of those oases wua triad,-- ‘namely. Hew York
Phonograph Compuny against Solomon B. Davoga. This case
came on before Mr, Justice JCoogh at Special Tei*m, and
rooultod in an interlocutory judgment in favor of the
plaintiff and against the defendant, directing that an
injunction issue, and awarding an accounting an to the
profits. 2?rom this interlocutory judgment the defendant
appealed tc tho Appellate Division for the second Depart¬
ment, and the interlocutory Judgment appealed from was
unanimously reveroed, Mr. Justice Miller writing the
opinion and deciding, among other things, that
“the oonoluaion seme inevitable that whatever
rights* tho plaintiff has as against the defendant
or his vendor are patent, not contract rights.
If bo, any euit to enforce thoeo rights ariose under
the patent laws of the United States, and the
Courts of thin State cannot take Jurisdiction
of it. “
Jrom this Judgment of reversal tho plaintiff
has appealed as a matter of right to the Court of Appeals,
which appeal io now pending and ia Ho, 599 on tho preeont
calendar of that Court.
10
While the aforesaid appeal wao pending in
the Appellate Division, the Hew York Phonograph. Company,
through iti» solicitors, ffoalineon, Tompkins & Toralinoon,
and its counsel, louio Tticka, mado a motion in the
federal suit to punish the national Phonograph Company for
contempt of the injunction issued therein on March S3,
1006. Thia motion cone on before Hr. Justice Basel , who
had decided the ease originally, and he found the defend¬
ant in contempt of the said injunction, in that it hdd ,
after service and notioe of said injunction, sold and uned,
and caused to he cold and used, and made, sold and licens¬
ed for use, phonographs and phonograph supplies within the
State of How York containing, or made according to, the
inventions and improvements nude hy Thomas A. Edison dur¬
ing the period prior to February 18, 180(3, of the follow¬
ing named patents, to wit:
Ho. 484,662, dated October 12, 1889.
» 420,274 and 430,270, dated Juno 17, 1090.
* 414, ,7 80, dated Hovoraber 12, 1809.
* 448,780, dated Haroh 24, 1891.
* 488,972, dated December 19, 1891,
* 484,083 and 484,384, dated October 18, 1892.
* 499,079, dated June 20, 1093.
* 513,697, dated January 23, 1894.
* 713,209, dated Hovasbor 11, 1902.
For this contempt ho fined the defendant nation¬
al Phonograph Company $2300, $15,00:.; thereof to be payable
to the complainant, How York Phonograph Company, and tho
balance to the United States, A decree was entered
accordingly on April fi, 1908. From this decree tho de¬
fendant national Phonograph Company sued out a wit o£
error to the United States Clroult Court of Appeals,
11
claiming, among other things, that the contempt decree
v/ao erroneous, in that defendant had the right to use all
the patents mentioned, hy reason of the expiration of
shorter term foreign patents. Willo this writ of error
was ponding, the Appellate Division rendered its de¬
cision in the Davega case, as above outlined.
The writ of error v/as argued in the United State j
Circuit Court of Appeals in the early part of 1909, and
on March IS, 1909, the Court rendered its deoision af¬
firming the judgment of oontempt appealed from, but de¬
clining to adopt JUdge Hazel's reasoning. Judge Hazel
had said that the national Phonograph Company could not
sell phonographs that embodied the certain patents above-
mentioned in their manufacture, whereas the Circuit Court
of Appeals, Judge Noyes writing the opinion, said, in a di s-
tum, that the injunction should be so oonstrued as to
enjoin the National Phonograph Company from selling any
phonographs or supplies.
The defendant first gave notice that It would
apply to tho United States Supreme Court fox a wiit of
oertiorarl to review the decision of the United States
Circuit Court of Appeals, and forthv/lth made a motion to
stay the issuance of the mandate in tho latter oourt
ponding the determination of tho United States Supreme
Court on auoh application. Shortly thereafter the de¬
fendant withdrew this notice and filed its briof in the
United States Circuit Court of Appeals for a rehearing
of the oase, on tho ground that the Court had erred in
18
ito interpretation of Judgo Hanoi's deoree, and hud further
orrod In proceeding as though It worn sitting as a court oi
equity in review of a decree, instead of as a court of law
in review of a Judgment at law in a oriminal oubo under
writ or error, and had further orrod in giving any ouch
broad interpretation to the injunction; beoausc the effect
of it would he that tho National Phonograph Como any would
not have been heard and would have had no opportunity of
being hoard upon nuoh queotion, cinoo the quention cov¬
ered by the Court* a dictum «aa hat raised in tho as¬
signments of error and wan not argued by tho plaintiff
in error.
Prior to the deeirsion of Judge Hoyes, Hr, Hicks
had approached Mr, Buckingham, one of the counsel for
tho defendant, in au effort to effcofc a settlement of the
litigation, Hegotiatieno wore had by this deponent.
Hr. Buckingham, Hr. Kicks and counnol for tho Hew York
Phonograph Company relating to the settlement, and final¬
ly Hr, Hicks reported that the Most York Phonograph Company
and Mr. Andem, individually, and representing tho outside
local companies, would accept $180,000 in full nottleaent
of all their rights, exoluulvo of whatever rights Mr. Hyman
might, have In his canoe, and asked if deponent would pay
that amount. Deponent reserved hio decision a few days,
and told Hr, Hioke. to begin tho preparation of papers based
on that proposition. Wr.hioba thereupon prepared on
elaborate set of papers embodying the proposed settlement
for $130,000, and submitted whom to deponent for his ex¬
amination and approval. At t5,is P01** **• Wokingham
suggested to Mr. Tomlinson that tboy should go Jointly to t
13
the United States Clroult Court of Appeals and Inform the
Court of the ponding Battlement, and auk it to delay the
pooeible handing down or Us opinion on the writ of
orror upon the Judgment of contempt for a reasonable tiao
in order that ocuncel might got tho papers ready and com¬
plete the Battlement. Hr. IcBilinaon, deponent is informed,
however, declined to Join in ouch a request to the court,
unless he had a definite aeeuranoe that tho defendant had
agreed to accept tho offer of £160,000 aforesaid.
Deponent has boon Informed that Hr. Buckingham stated to
Hr. Tomlinson that he felt assured that the settlement
would go through, 'out that he aould not say oo positively
without further oomraunloation with his client, whereupon
Hr. Toialinaon rafuaod to Join In the above request unless
Raid proposition should bo first accepted.
At this stage of tho negotiations tho said
Buckingham, who was seriously and dangerously ill, was
compelled to give up all business matters, and prootioolly
from that moment has been unable to toko any part what**
ever in the negotiations or ecttlemont resulting there¬
from, and before anything further could be done by thoeo
who took hie place, the Olrouit Court of Appeals handed
down its decision affirming the Judgment of contempt.
As soon as this decision was rendered, tho
complainant and Kr. Andom doolinod to go any further with
thair offer to take £100,000, and (ill negotiations for
that settlement were off,
A few days later, however, the complainant • o
BOlloitorBcame back and raised their demand to $780,000.:
Hogotiationa were again had by deponent with the nolicitor i
14
tor the Hew York Phonograph Company, and on March 27, 1909
they submitted to deponent;, in behalf of the Hew York
Phonograph Company and Janes L. Andem, individually, and
acting for the other looal oorapanios, an offer to accept
$425,000 in full settlement of the claims of said Andem
and of all said looal companies, except the olalms aris¬
ing out of the causes of aotion; for whioh the Hyman cults
had been brought against the jobbers and dealers. Depon¬
ent thereupon consulted his counsel Judge Hatoh, Mr.
Church and Mr. Clarke, as to the advisability of accept¬
ing this offer, and was adviBed by them that it would be
unwise to pay out auoh a large sum of money, unless a
full and complete settlement of all the litigations could
be obtained thereby. Deponent had been informed by the
solicitore for complainant that all the parties in in¬
terest were willing to settle for the round sum above
mentioned, except Mr. Hyman, who, as deponent was inform¬
ed, had stated to Mr. Tomlinson that he would not take
less than $100,000 for his interest. Deponent deemed
this demand extravagant, and absolutely refused to pay
any such sum to Mr. Hyman. Deponent further declined
the offer above mentioned and made a counter proposition
that he would pay the $426,000 if, and only if, every
olalm, including the Hyman causes of aotion Bhould be
released by the parties. This counter proposition
was made by deponent after consulting his counsel as to
whether Mr. Hyman had a legal right to prevent the set¬
tlement, in spite of the fact that his own olient. was
willing to make it, and being advised by both Judge Hatoh
and Mr, Clarke that deponent had the legal right to make
a settlement, in good faith, with the New York Phonograph
Company and Mr. Andem, individually, and representing
18
the other local oompanloa, with or without Mr. Hyraan'o
consent ; but that before ranking the settlement bomo one
chould bo sent to Ur. Hyman and Inform him of the fact
that a settlement was about to take place and endeavoring
to get him to join in it by paying to him a reasonable
James U Andcm and tho New York Phonograph Company
and its nolioitora had prior to this time represented and
warranted to deponent and all tho interests represented by
him that the said Samuel P. Hyman had commenced all of
said suits then pending In the Supreme Court for VaDt~
chaotcr County and in th« Oourt of Appeals for tho State
of Hew York under a contract with the Hew York Phonograph
Company contained in a letter dated April 19, 1906, from
James U And cm, General Manager of said Hew York Phonograph
Company to Samuel V. Hyman, a oopy of which haa boon
annexed to the petitioner's motion papere herein, and th«y
hod further represented and warranted to deponent and th«
interests represented by him that the said letter was «m
only authority or agreement under which said Samuel 3?.
Hyman had commenced, and prosecuted said suits, and was
the only authority or agreement which the said Samuel V.
Hyman had ever had to bring or prosecute said euits,
and was tho only contract or obligation which tho How
York Phonograph Company had ever entered into with tho
said Gaauol V. Hyman or with any one in his behalf for tee
institution or prosecution of or in any way concerning
said suits, and that tho said Samuel ». Hyman had alwayt
aoted and was then acting pursuant to the Bald lettered
that the said Samuel ?. Hyman had paid, or caused to be
of said suits, and that tho Hew lork
paid, all the expenses
16
Phonograph Company had paid no material part, if any, of
euoh expenses, nor had the said Samuel J?. Hyman, at any
tiiao since tho date of the said letter, rendered anyvblll
to aiid Hot/ York Phonograph Company or to any of its
offloarB, directors or agents on account of any pro¬
fessional servicen or any expanses -whatsoever arising from
or in connection with tho institution, existence or
prosecution of said suite.
That deponent, prior to the settlement, had no
notice whatever of Mr. Hyman’s alleged contract relating
to the exclusive right to tho amusement features of the
Edison phonograph in Hew York State.
That when deponent submitted a copy of the
aforesaid letter to Hr. Hyman dated April 19, 1906, to
hia counsel Judge Katoh and Mr. Clarke, they both stated
to him that if that was the only agreement or authority
under whioh Hr, Hyman had instituted and was proseouting
his suits, then, in their judgment, suoh contract was
champertou3, and that Mr. Hyman waa therefore not entitled
to any recovery; but that nevertheless they thought it
advisable to offer to pay to Mr. Hyman a fair sum for hia
interest, regardless of the chsunpertous feature of his
contract.
The question thon arose as to what was a fair sum
for his interest. Deponent had been informed by complain¬
ant’s solicitors and by his own counsel above-mentioned,
and believed, that the said Hyman hod never taken any part,
directly or indirectly, either as attorney of record or
as counsel, in any of the Federal suits, but had appeared
17
no, Inly for tho flaw York Phonograph Company in tho, nuita
brought by him in the Supremo Court for Tffaatclit'B'Ur County
against variouo J obbers and dealers in Ml son phonographs
and supplies in the State of How York. In fact deponent
and all of hio counael who hare been associated with him
ninco the institution of tho cults against tho jobbers
and dealers have always referred to such suits as "tho
Hyman suite".
As has been hereinbefore ohovm, tho first of
Mr, Hyman's suits was brought in June, 1906. l?or five
yearn prior thereto the Bow York Phonograph Company hdd
boon litigating in ifefls main suit in the United States
Circuit Court for the Southern District of How York
and also in many other jurisdictions, all of which litiga¬
tion was bitterly fought and contested, even down to the
Aato of the set Mo went and was all oovorod by and terminat¬
ed with said Battlement; and in none of this litigation
did Hr, Hymn play any pai-t whatever. He has tried
only ono of tho suits that he did bring,— namely, Hew
York Phonograph Company vs. Solomon B. Dave.ga, which
trial resulted, as above aot forth, in an interlocutory
judgment directing that an injunction issue against tho
defondant and awarding tho plaintiff an accounting, which
Judgment on appeal was unanimously rovsrsod by the
Appellate aivloion, on the ground, among othora* that tho
State Courts had no jurisdiction becauso patents ^uostlonii
wore involved and were sololy within tho cognisance of th<>
Pedorol Courts.
noponant was also advised by his said counsel
that Mr. Hyman had appealed as a matter of right to tho
Court of Appealo from tho order of the Appellate hiviolon
unanimously revoking tho Interlocutory judgment ontorod
after the trial before Mr. Notice Keogh, end that the
Court of Appeals was without juriadiotion to hear ouoh an
appeal, and inasmuch as the complaints in all the suits
brought by Mr. Hyman were identical in every respect ex¬
cept as to the nemo of the defendant, and tho answers
interposed were in all repp^ta identical except as to
the nemo of the defendant, and, in a few oaaea as to
gpeoial additional defenses pleaded, deponent was advised
by his counsel and concluded that all of the suits breu
by Mr. Hyman, must be dismissed on the strength of the
Appellate Division's decision in the Savega case.
such was tho situation when the settlement, ne¬
gotiations ware brought on and carried out. Deponent ha l
never regarded the Hyman suits as dangerous in themselves,
and especially was thin true after the announcement of
the decision of the Appellate Division in the Davega case
adopting the contention which the defendant had always
strenuously urged, -vis. , that the State courts had no
jurisdiction of tho cause of action because patent: por¬
tions were Involved which were solely cognisable by the
federal Ceurto.
After caroful consideration and consultations
with counsel and the parties in interest, deponent con¬
cluded that he would not pay more then pO.OOO in full
BOttlemont of all tho oases wherein Mr. Hyman was attorney
19
of record, which amount he baliovod to too eminently just
and fair to Mr. Hyiaaru In making this statement deponent
does not dooire or moan to belittle th® work or the oer-
vloes of Mr. Hyman in the alightoot degree. On the con¬
trary, deponent has tocon informed toy his counsel, and
beliovoe, that Ur. Hyman hao always shown great activity
and industry in the prosecution of hln cults, tout when
the question arises ao to the value of the work of the
respective attorneys in this long litigation, deponent
confidently states that Mr. IiOUi « Hicks deaorvoo toy far th >
largest av.ount of credit for the complalnunt's success,
not only toeoauce he did na&rly all of the original work,
but also because of the able way in which ho conducted it 5
litigation over a period of seven or eight years and
finally obtained, in apito of tho opposition of many
distinguished oounool, an injunction and dacroo for on
aooounting in the Federal case. Inasmuch ao this account*
ing would have applied tc a period of many years and to
the whole business done toy tho national Phonograph Company
in the Ptuto of Jfow York during ouch period, the danger
of tho possible judgment therein, if no settlement had
boon effected, would have been far greater than any other
possible Item of damage present dii in the litigation.
Tieponent had also bem advised by hio said
oouneol that in their opinion the fifty per cent, ccntln-
gsnoay compensation mentioned in Wr. Hyman's contract, If
properly conetrued, ahould toe limited to the total arnStmt
of money collected toy suit, compromise or otherwise from
the canes brought and the actions or proceedings prosecuted
toy Ur, Hyman against such parties as tho Mow York Phono¬
graph Company may have donign&ted, pursuant to the pro-
so
visions contained in the cold contract,
Vfith all the foregoing facto in mind and on the
basin that 5150,000 wats going So too paid for nil the ITevr
York Phonograph Comp any1 a rights, deponent concluded that
the payment of 480,000 for the so-called Hyman milts van
more than fair to Hr, “ysian, Deponent thereupon sent one
of hi a associate counsel, Mr, Melville Church, to Mr. Hyaan,
with instructions to infers*, him of the then pending ne¬
gotiations, of which, deponent understood, Mr. Hyman had
already had notice, and that deponent offered to pay for
the Hyman aaoos §80,000, one-half thereof to Mr. Hyman upo i
hie shewing a contract entitling Mm to fifty per cent,
thereof} that Mr. chuvoh accordingly offered Hr. Hyman
§10,000, and uubisequently, on toeing informed that Hr,
Hyman's expenses to date hrd amounted to §18,000, aakod
Mr, Hyman if ha would accept §10,000 in addition to hi a
distourcemente, or the tium of §25,000, which Ifr, Hyman,
ub deponent is informed and believes, refused to aooopt,
Wtiot tool: place at the conference between Mr, Church and
Mr. Hyman (at which conference Mosers. Dwight Macdonald and
.TOBCph S’, McCoy ware also proaont) will more particularly
appear from the affidavit of Melville Church, verified
April 3, 1009, and the corroborative affidavits of Dwight
Macdonald and focaph V, McCoy, verified April 27, 1900,
all of which are submitted herewith, and made a part
boreof*
In negotiating the Battlement above mentioned,
deponent throughout felt that no many persons were inter¬
ested in a contingent way or otherwise in the moneys t&
21
bo paid to the plaintiff companion and Mr. Andem upon the
settlement, that the solicitors representing them would be
unable to curry out their agreements of settlement, and
honee deponent doomed it wise and instated that hlo
attorneys should obtain fortsal written contraote of set¬
tlement and that some earnest money should be puifi to
bind the bargain* Such contractu were entered into on
the 3rd day of April, 1909, and copies thereof have bom
annexed to the answering affidavits upon this motion.
By theso contracts the parties agreed, as more particularly
appears therein, that the settlement should take place on
or before fl:00 P.1,1. of April 9thi 'fhia date was
selected- as affording the attorneys a reasonable time in
which to prepare the necessary papers with which to con¬
clude the settlement,,- On tbits settlement tho (Ton York
Phonograph Company, Mr. Antloa and their counsel absolute¬
ly refused to deliver any papers until tho moneys wore
puid over, and deponent admits that he was equally unwill¬
ing to pay any moneys until the papers were approved by
hia counsel and delivered to him;., honoa tho closing of
the settlement agreements required the simultaneous do-
livery of the general releases and other papers And the
payment of tho noneyo. Deponent’s regular depositary was
» bonk in Ifowark, lT*w Jersey, where the moneys to bo paid
oft the Bettlcmenty.'wora deposited. $hcn counsel had
selected April 9th ao the time for closing, they wore
unaware that tho 9th of April was a legal holiday in the
State of Hew Jersey, and when deponent informed them of
this!) fact on the morning of tho ath of April,, the prop or-
22
ation of the papers was rushed in an effort to close the
transaction "before the holiday and thereby avoid, if
possible, repudiation by the plaintiff of its agreement
to settle. Deponent made arrangements with the Bank: to
keep open until all the parties Jb’o'Uid complete the
papers and get out' to Newark, 'which happened shortly
before midnight off the 8th of April. 1
In making this settlement deponent paid out for
the account of the Hew York Phonograph Company $150,000,00,
in three cheoke for the respective sums
of $106,138.60, $20,000 and §23,861.40; and
in making the settlement as to the interest
of Hr. Andem, individually and as represent-’
ing the other local phonograph companies,1
Hr. Andem was limited in effecting such
settlement by his powers of attorney
as follows: He could not settle the
New England Phonograph Company case for less
thani $10,000; he could not settle the
State Phonograph Company of Illinois case
for less than $20, ’000; he could not settle
the Minnesota Phonograph Company case for
less than $20,' 000; he could not settle the
Missouri Phonograph Company case for Iobs
than $40,000; and he could not settle
the New York Phonograph Company case for
less than $10)000. As to the Ohio Phonograph. . .
Carried forward,, $150,000* OQ
Brought forward $150,000,00
Company, the Wisconsin Phonograph Company
and the Kansas Phonograph Company ouoob
Ur. Andem's contract gave him authority to
settlor for ouch sum as, under the advice
of oounoel, he might sue fit; henoo, in
completing the settlement, deponent paid out
for the acoount of James T» Andem, in¬
dividually and for the aocount of the
above-mentioned local phonograph companion,
the folio v?ing chocks:
$14,076.25
37,500. 00
6,000.00
2,250. 00>
12,500.00
28,770. 4?
20,000.00
4,212.04
07,242. ia
07,242. 19
103.39
103. as
$270,000.00
Barnes t money,
5,000.00
l’otal ,
In addition to the foregoing sums, and aboo-
lutoly separate and apart therefrom, deponent paid T.ouio
Hicks the sum of $30,000.
On making the aforesaid payments, deponent
received general releases and oonsonts to tho discontinu¬
ance of all litigations now pending, as hereinbefore set
forth, and consents to the’ cancellation of all bonds and
Legal Department Records
Phonograph - Case Files
Thomas A. Edison, Inc. v. United States Phonograph Company
This folder contains material pertaining to the suit brought by Thomas A.
Edison, Inc., against the United States Phonograph Co. in the U.S. Circuit
Court for the Southern District of New York. The case was initiated in June
191 1 and involved Edison's U.S. Patent 964,221 on a 200-thread record. The
selected items consist of the bill of complaint, along with testimony by Walter
H. Miller and George B. Redfearn regarding early technical and commercial
experimentation with 200-thread records. Miller's and Redfearn's testimonies
were entered into evidence in two companion suits against the United States
Phonograph Co., which involved Edison's reissued patent on a button-ball
stylus (U.S. Patent Reissue 1 1 ,857) and Peter Weber's reissued patent (U.S.
Patent Reissue 13,120) on a four-minute stylus. Among the documents not
selected is the application file for Edison's U.S. Patent 964,221. Related
material can be found in "Phonograph - Correspondence - General."
JOTTED STATES CIRCUIT COURT
SOUTHERN Dlff RICT 0? NEW YORK.
THOMAS A. EDISON, INCORPORATED ,{
Complainant , j
UNITED STATES PHONOGRAPH CO. ,
Defendant.
In Equity on
S. letters Patent
No. 964,221.
BIEL OP COMPLAINT.
Solicitors for Complol noint .
' Herbert H. Dyke, Esq.
McCarter & Bnglishy.
765 Broad: St. , .Newark j N . 3
Of Counsel for.; Complainant.
*
IN THE UNITED STATES CIRCUIT COURT
SOUTHERN DISTRICT OP 1W YCHK.
THOJJAS A. EDISON, INCORPORATED, )
Complainant, ^
UNITED STATES PHONOGRAPH COMPANY,
Defendant. )
TO THE HONORABLE THE JUDGES OP THE CIRCUIT
COURT OP THE UNIT!© STATES PCR THE SOUTH¬
ERN DISTRICT OP HMf YORK. .
THOKAS A. EDISON, INCORPORATED, a corporation
created, organized and existing under and By virtue of the
laws of the State of Now Jersey, and having ito principal
office at West Orange, County of Ebbox, and State of New
Jersey, and a citizen of the State of New Jereey, hringa
this, its Bill of Complaint , against the UNITED STATES PHONO
GRAPH COMPANY, a corporate! created, organized and existing
under and hjt virtue of the laws of tho State of Ohio, and
having its principal office at Cleveland in uaid State, and
a oitizen of the State of Ohio, and having a regular and oe-
tahllshed place of husinees at Ho. 5-7 Union Square, Bor¬
ough of Manhattan, in the City, County and State of New York
within this District, wherein some of tho aoto of infringe¬
ment hereinafter complained of were committed.
And thereupon your orator complains and soyss-
In Equity on
U. S. Letters Patent
No. 004,221.
X. Shat heretofore and before the 3rd. day of Janu-
ary, 1907, TIIOUAS A. HDIBOl? of Llewellyn Purle, Orange,
County of Essex and State of New Jersey, and a citizen of
the United States, hub the original, first, and sole inven¬
tor of a certain now and useful improvement in SOUND-RECORDS ,
fully described in the I.ettorB Patent hereinafter mentioned,
and which had not b eon known or ueod by others in this coun¬
try boforo his invention or discovery thereof, and whioh had
not been patented or described in ary printed publication
in this or any foreign country baforo his invention or dis¬
covery thereof or more than two years prior to his applica¬
tion for Letters Patent therefor hereinafter mentioned;
and which said invention was not firat patented or caused to
be patented by the said invontor or his legal representa¬
tive or assigns in ary country foreign to tho United States
on an application filed more than twelve months prior to
the filing of his said application for Letters r&tent of tho
United States; and whioh had not been in public use or on
sale in tho United Spates for wore than two years prior to
hia oald application, and which had not been abandoned.
2. That on or about the 3rd. day of January, 1907,
tho said Thomas A. Edieon, being as al'orooiid the original,
first,, and sole inventor or discoverer of the said improve¬
ment in Sound-Records, made application in writing to the
Commissioner of PatentB of the United States for tho grant
of Letters Patent therefor, and paid into the Troaaury of
the United 8tatos tho fooe required by law, and thon and the -e
fully and in all respects complied with all tho necessary
requirements and conditions of the Statutes of the United
StatoB in suoh oases made and provided.
a
3.. That on or about the 26th. day of November, 1907,
and before the iasuanoe of Letters Patent on said Improve¬
ment, said Thomas A. Edison, for a valuable conBidoration,
by an instrument in writing, duly signed and delivered, and
recorded in the United States Patent Office on the 27th th.
day of November, 3.907, did sell, assign and transfer to the
New Jersey J’atent Company, a corporation of Nov# Jersey, its
successors or assigns, the entire right, title and interest
in and to the aforesaid invention and in and to any Letters
Patent of the United States which might ho granted therefor,
&b by Bald assignment or a duly authenticated copy thereof,
ready in Court to be produoed, will more fully and at largo
appear.
4. That due and legal proceedings were hod on said
application for Letters Patent-, dhd i that thereupon the Com¬
missioner of Patents, having made due examination aB to the
novelty and utility of the said invention as provided by law,
caused to be issued unto the said New Jersey Patent Company,
Letters Patent in duo form of law under the seal of the Pat¬
ent Office of the United StuteB, signed by the Commissioner
of Patents and bearing date the 12th. day of July, 1910, and
numbered 904,221, and that said Lettera Patent did grant
unto said New Joroey Patent Company and unto its successors
and assigns for the term of seventeen years from the date
thereof, the exclusive right .to make, use and vend the said
invention throughout tho United Staton and the Territories
thereof, as by reference to said Letters Patent or to a duly
authenticated oopy thereof , ready in oourt to be produoed,
will more fully and at largo appear.
3
. ..... — « >1.
5. That thereafter, and on or about tho 20th.
day of June, 1911, oaid llew Jersey Patent Company, being
tho owner of the cold invention and Letters Patent,, for a
valuable consideration, by an instrument in writing, duly
signed and delivered, and recorded in the United States
Patent Office on the 21st. day of Juno , 1011, did
eell, assign and transfer unto your orator, Thomas A. Edison,
Incorporated, a corporation organized and existing under and
by virtue of the laws of the State of New Jersey, its suc¬
cessors and assigns, the v/holo internet in and to tho afore¬
said Letters Patent of the United States, Ho. 064,221, and
tho Inventions covered thereby, together with the right to
sue for and recover to Its own use damages and profits for
all past infringements and violations of said Letters Patent,
as by reference to said assignment or a duly authenticated,
copy thereof, ready in court to be produced, will more fully
and at largo appear. That your orator, Thomas A. Edison,
Incorporated, is, save for the doings of defendant and others
acting in concert with it, in the exclusive possession of
said rights and privileges secured by said Letters Patent
No. 964,221, and is entitled to the exclusive use, benefit
and advantages of the said invention and improvements and to
oil claims for violation or infringement thereof.
/*'• ■ ■ ■. • .
0. That your orator is engaged in the manufacture
of Souud-Hooords embodying the said improvement and inven¬
tion, and is prepared and stands ready, and is able. to supply-
all public demands for the use of said invention of tho
aforesaid Letters Patent.
/
' 4 ' —S
■ ' |
1
!
;J . ,
- -v v-
7. That the defendant, well knowing the promises
and the rights scoured to your orator as aforesaid, and, con-
tfr'i’virig' to injure your orator and to doprive it of the bene¬
fit and advantages which might and otherwise would accrue (
unto your orator from the said invention, after the grant of
said Letters Patent Ho. 964,:>S21 and b afore the commencement
of this suit, within the Southern District of Hew York at its
regular and established place of business at Ho. 5-7 Union
Square, in the Borough of Manhattan, City, County arid State
of Hew York and olsowhore in the United States, without the
ifeonso or allowance of your orator or of its predecessor
in title, said How Jersey Patent Company, and against the
will and protest of jrour orator, and of said Hew Jersey Pat¬
ent Company^ arid in violation of the righto now vested in
your, orator did unlawfully and wrongfully make; use and sell
and cause to be made, used and sold, and is now making using
and selling and causing to be made, used and sold Sound-Hec-
ords embodying, constructed and operating in accordance with
the improvement and invention of the said Letters Patent ns
therein set forth and claimed, and that defendant still con¬
tinues so to do, and that it threatono to continue the afore¬
said unlawful acts to a largo extent, all in defiance of the
rights secured to your orator as afdresaid, and to its great
and irreparable Iobs and injury, and by which your orator
has been and still is being deprived of groat gains and prof¬
its which it might and otherwise would have obtained, but
which have boon received and enjoyed by the said defendant
through its said unlawful acts and doings.
- > . ■ . ..
e
a. That your orator haa cuusod notioo to bo given
to said defendant of aaid infringement and of the rights
of- your orator in the premises, and haa requested defend¬
ant to deBiBt and refrain therefrom; hut defendant haa
disregarded rculd notice and has rofufiod to desist from
said infringement and still continue b to make, use and doll
Sound-Records embodying said invention; and your orator
further shows that as to the number of Round-Records vihloh
have been by the defendant as aforesaid unlawfully maddy
used and sold, and as to the extent of the (taints and prof¬
its recoived and enjoyed by the euid defendant from such
unlawful making, use arid sale your orator is ignorant and
prays a discovery thereof.
?). That tho manufacture, use and sale of Sound-
Records embodying the invention set forth in the betters
Patent aforesaid by the def ondant , and its preparation for
and avowed determination to continue the name in disregard
and dofianoe of the rights of your orator have the effect
to encourage and induce others to venture to infringe said
Letters Patent.
1°- That your prator and its predecessor in tltlo to
the patent in suit, eaid How Jersey Patent Company, and all
persone making under the authority of them or either of thorn
devices employing tho invention of said Letters Patent, Ho.
964,221, have given notice to the public thut the seme are
patented, and have fixed thereon tho word "Patented" together
with tho day and year on which said patent was granted, and
have fixed to each package containing one or mors of said
deyioes a label containing the like notice.
And your orator therefore prays as follows: -
1. That tho defondant may be required by a decree
of this Honorable Court to account for and pay over to
6 . .
your orator auoh gains and profits as have aoorued or been
received or earned hy said defendant hy reaoon of its said
unlawful doings, and all such gains or profits as would
have accrued to your orator and to its predecessor in title,
Hon Jersey Patont Company* to whose rights your orator has
succeeded, hut for the unlawful doings of said defendant,
and all damages your orator and its said predecessor * in ntitl s
have sustained thereby; and that the court may assess said
damages and profitB and may increase the damage H to a sum
not exceeding three times the amount thereof.
2. That the defendant he compelled hy an order of
this court to deliver up all the infringing Sound-Records
in its possession.
3. Shat the Bald defendant, United States Phono -
graph Company, and its officers, servants, agents, attor¬
neys, employes, workmen and confederates and each and every
of them nay. be , perpetually restrained and enjoined by an
order of injunction of your. Honorable Court from directly
or indirectly making, using or selling any Round-Rocdirds
containing, employing, embodying or operating in accord¬
ance with the invention of the said Letters Patent; and
..from infringing upon or violating the said Letters Patent
in any way whatsoever^
4. That your Honors will grant unto your orator
a preliminary injunction, issuing out of and under the seal
of, this Honor* le Court, enjoining and restraining the
said defendant and it's officers, servants, agents, employes,
workmen, and confederateo and each and every of them to
the samo purpose, tenor and effect us hereinbefore prayed
for with regard to the said perpetual injunction.
5. That the said defendant may be decreed to pay
tho costs of this suit.
7
6. Shat your orator may have ouch othor and 'further
relief ao the equity of the case may require.
TO THE EOT), THEREFORE, that said defendant may,
if it can, show why pour orator should not have the relief
prayed for, and may full, true and direct answer make,
hut not under oath, (answer under oath being hereby bs\-
preB3ly waived) according to the beat and utmost of its
knowledge, reraombranco and belief to the several natterij
hereinbefore averred and set forth as fully and particu- ■
larly as if the same were ropeated, paragraph by paragraph,
and the said defendant thereto specifically interrogated, ■
may it please your Honors to grant unto your orator a writ '
of BUbpoena ad reBpondendunL issuing out of and under the
seal of this Honorable Court, directed to the Bald defend-
and, United States Phonograph Company, commanding ft to
appear and make answer to this Bill of Complaint and to per¬
form and abide by such orders aftd decrees as , to this court
may seem , just.
And your orator will over pruy, etc.
THC1TAS A. EDISON, INCORPORATED
By
Solicitors for Complainant.
Of Counsol for Complainant f
STATS 07 HEW JERSEY, )
COUHTY 07 ESSEX. )
7RAHK L. DYER, being duly sworn,
depooeB and save that ho Is tho President of THOMAS A.
EDISON, INCORPORATED, tho complainant named in the fore- •
Going Bill of Complaint; that he has read the foregoing
Bill of Complaint and knows the contents thereof to he
true except as to thOBe matters therein stated to he
alleged on information and belief, and as to those matters
he believes it to bo true; that . the reason why; thiB veri¬
fication is not made by the complainant, Thomas A. Edison,
Incorporated, personally, 1b because said oomplaipant is
a corporation. i
this ^ day of June , 1911.
Walter II . Killer, witnese produced on behalf ofi
complainant, being first duly sworn, deposes us follows
in answer to interrogatories by ISr. Dyke.
Q, 1 Please state your name, age, residence and
occupation.
Orange, V. . J.
A Walter H. Killer, 41 years old, manager of the
recording department of Thomas A. Edison ,mlnc .
<1 2 l?or ho v/ long have you been connected with the
phonograph industry.
A Por the last 24, years.
q 3 Please give a brief statement of the various ways
in which you have been identified in the phonograph
industry during this period.
A I Btarted with 1-Jr. Edison at his laboratory in 1687
and after an experience of a year and a half in the
maohine shop was transfercd by Mr. Edison to his phono¬
graph department and have been connected with that de¬
partment since. t
q 4 I call your attention to a machine on the table befoi
you and. bearing the number 21,289. Please state what
this machine is if you can.
is like the machines built
A This maohin e mxxlmiiX by the Edison Phonograph Works
United Phonograph
for the EdiEion-33Bi± Company of London, England.
Q 5 By what name were the phonographs built by the
35 di non Phonograph Works for the Edison United Phonograph
Company known,
A They were known as the Model C Phonograph. They were
equipped to make 200 thread recordo, that is records bavin;
200 threadB to the inch.
C l 6 About what time were the machines built for the
Edison United Phonograph Company.
A 33etween 1892 and 1895.
Q 7 Were you familiar with those machines at the time
when they were being put out?
A 1 was.
0, 8 How does the machine before you compare with the
machinesmadc by the Edison Phonograph Works for the
Edison United Phonograph Company?
A It looks identical to me with those turned out at
that time.
Q 9 I should like to have you exanine the sound box on
this machine which bears the numbor 21,708 and state how
that sound box compares with the Model C machine sound
box as put out in 1892 to 1896.
A It seems to be the same kind of sound box.
Q, 10 Please state briefly the leading characteristic Tea
tures of the Btyle C machine of 189a to 1898.
A Machine wan equipped with electric motor and so gearei
that its feed wan 200 threadB to the inch. The mandrel
was so arranged that you could record on a blank of the
same diameter as in used at the prooent time. The drum
of the mandrel was removable and no arranged that when
remaining
this drum wan removed the^shnft could ! e uoed to mount
a small mailing tube of about three quarters of an inch
in diameter. It was equipped ’with a shaving device
which could turn both the large and the ir-all blanks and c
ing stylus
recordxxxwitkxa 20 to 22 thousandths of an inch in diam¬
eter, and a reproducing ball about the same diameter on
the ata :e lever. The recording arm wan so arranged on
the buck rod sleeve so that it could be lowered or ruined
and records
m order to record o r reproduce blanks, of both diameters
T , ing stylus
In order to bring the recorder . into pluy there is a lever
a inched to the holder of the recorder which swings the
said recorder in ouch position thut the diaphragm will
record and reproduce according to tho way the lever in set
<1 11 What was the effect of rotating the sound box, by
which I mean the same part that you have designated the
recorder, axially to its two.poBitions?
-16-
_ 4
A When the lever of the sound box is turned to the left
the recording stylus io in play and ready for recording
and the reproducing stylus is out of play. When the
lever of the sound box is turned to the right the re¬
producing stylus is in play and the recording! stylus
out of play.
Q 12 Did you yourself ever make any use of theoe
style C machines during the period from 1892 to 1895 when
they were being put out?
A I made a number of musical records for the, United
Phonograph Company using this model C phonograph.
<1 13 About how many ouch musical records did you make
as near as you can remember?
A I v/ould say between 76 and 100.
q 14 Whore were those records sent7
A To the Edison United Phonograph Company, London,
England.
|q 15 With what diameter of recording stylus were those
srds made aB nearly as you can remember?
Prom 20 to 22 thousandths in diameter.
By JJr. Oborlin
Counsel for complainant io requested to state
on the record whether he intends to produce
specimens or a specimen of the records con-
oerning which he iB exnmining the witness,
lor if ouch specimen or specimens are not
of °nuna+ , oc t ion Will be made to the lino
or questioning a1;ove.
q 16 Have you in your possession, or can you obtain
from any source that you are familiar with , any of the
musical records which you made on the style C machine
at that time? and to which you have referred?
A X have none of these records hut possibly Mr.
Koriarity of the Edison United Phonograph Company at the
time, could produce them,
q 17 Where is Mr. iloriarity?
A I do not know.
q 18 What were the records made of?
A These records were recorded on wax.
q 19 When did you last hear of Mr. Koriarity' s whereabout ;
A He waB connected with the Hew York Representatives
United
of the Edison Xjjii Company and I think they had an office
with Seligman & Company the Bankers at some address in
Hew York City. This must have been at least six or
ei ght years ago .
United
q 20 Has the Edison XKXX Company an office with Seligman
& Company now?
A Hot that I know of.
United
q 21 Do you know of any office of the Edison Ettii Company
in Hew York at this time?
A I do not.
q 22 Do you know of their having any office in the United
States at this time? _
-18-
A I do not know of any and I am- under the impression
that the Edison United Company went into the hands of a
Receiver.
Q 23 Do you blow where you could find out where Mr.
Horiarity is at the present time?
A I presume he could be located. X do not know
of any place whHiBxkHxxEHiil unless it might be Seligman
& Company.
By Mr. Dyke:
Counsel for complainant states that
inquiries will be made to learn of Mr.
Moriarity'B whereabouts if possible,
but that in view of the fact that the
records referred to were wax records
and that they witness has testified
that they were shipped to England as
long ago as 1895, the possibility of
obtaining of the said records is so
slight as to be substantially negligible.
musical
ft 24 what was the character of theA records which you
made at the time referred to with respect to the KkxxKsdK
of reproduction which could be obtained therefrom?
A The records made by this Model C machine and which
I made were records suitable for tube reproduction and
were not as loud as and did not have the volume of
those on the market today.
ft 25 What do you mean by "tube reproduction"?
A Records which were suitable for listening through
hearing tubes and were not suitable for hdirn reproductioi
Cl 26 Did you ever make any records* after that time on
the model C phonograph?
A Hot that I can remember.
Q 27 'Then vine the present Edison Amberol record placed
on the market , as nearly as you con remember?
A Somewhere in about 1908.
$1 28 In the interval from 1895 to the time when the
EdiBon Amberol records were put ion . the market in 1908,
were there any 200 thread records on the market?Bnxfcoc
Kxxymx.
A I never heard of any.
Cl 29 If there had been would you have heard of it?
A I would.
Cl 50 During the period named, 1895 to. 1908, were you
familiar with the phonograph records which were on the
market in the United States and also in foreign countries
A I was.
Q, 31 What was the number of threads per inch on
phonograph recordB which were on the market during said
period fran 1895 to 1908?
A 100 threads to the inch.
Q 32 Did. you have any connection with the development of
the Edison Asnerol record?
A I did.
-20-
q 33 rieaac state what such connection vras.
A Hr. Edison was rather anxious at that time to develop
a record which would be of longer duration than- the one
then on the market , and ho instructed me to begin experi¬
ments in order to make a 200 thread record. He furnished
me : feed screws and diaphragms and after experimenting
for several weeks it' -was found impossible to produce a
musical record which was equal to that on the market.
More sensitive diaphragms were tried, different recording
horns and harder \vax03, but .the results were quite unsat¬
isfactory and not equal to the volume obtained by our 100
thread records. About that time Mr. Edison arranged a
microscope in suoh a way that a phonograph record could
be easily inspected by it , and on examining it very
in the case of
carefully we found that /\the records we made that nearest
approached our 100 thread record, the groove made by thi
stylus would out out part of the adjacent groove and a*
iisiHnxthE on the greater part of the record showed that
the recordin g needle jumped out of the wax. Mr. Edison
then had a sketch made by his draftsman very greatly
enlarged, which shovred the relative amplitudes which a
for making these experiments
20 thousandth needle which was used at that time, and
the 40 thousandths diameter needle which was used for the
— MO _ t.b-pnn.d— vann.fSn mVi 1 nh nr orp then on the market
-21-
Thin sketch disclosed the fact that it was impossible
to got the amplitude with the 20 thousandth needle and
200 thread feed that could be obtained with a 40 thous¬
andth needle an <3 100 thread feed. I was then instructed
to continue my experiments with a 10 thousandth diameter
with
needle , ^which afterward we had no trouble in getting
the necessary result .
<1 34 For how long a time did you continue your experi¬
ment using the 20 thousandths recording stylus or needle
before you were directed to substitute one having 10 thou
aandths dianeker?
A I should say from nix to eight weeks.
Q 3b About what time was it that these experiments were
conducted?
A As near as I can remember, the latter part of 1904.
Q 3d For how long a tim e prior to that had you been
engaged in the art of recording sound records?
A I had been recording sound records more or less at
different times, since 1890.
Q 37 When you started in these experiments with Mr.
Edison, what was your individual expectation of being
able to produce a successful 200 thread record?
A I had no faith in it whatever.
*•22“
q 3B What position did you occupy in 1904?
A Manager of the recording department of the National
Phonograph Company.
q 39 How long had you occupied that position at that
time?
A I took charge of the making of mantor records of this
Company about 1900.
By Mr. Oberlin:
It in noted on the record that the
witness referred to a memorandum hook
in fixing the date in response to the
preceding question.
q 40 From 1900 to 1904 who had charge of the recording 6
of master records for the National Phonograph Company?
A I did.
q 41 Prior to 1900 what had you done in the recording
of phonograph records?
A A In 1893 I had charfp of the recording for the North
American Phonograph Company until that Company went
the
into the hands of a Receiver, and ifciHxmx *>ih recor ding
department of thiB company was bought out by Mr, Walcutt
and myself and others. I will have to refer to ny memor¬
andum book. I stayed with the firm of Walcutt Miller
first
& Company until the iHiinx part of 1896 jouixJkkx as the
chief recorder for the Company. After that time at the
advice of Mr. Edison, I became connected with the
-23-
new company organized colled the Phonograph Kocord Suppjr
Company with which Company I acted as recorder and managar
I left thin Company March 1897 and wan engaged hy Ur.
.Edison for the Tlationnl Phonograph Company, May 1897,
having charge of a duplicating plant, the masters for
which wore furnished to ue by a Company called the
United dates Phonograph Company, now. out of existence.
■Ve used their masters for a while and then started our
99 1900
own master recording plant which v/as about 188k or St,
From that time 1 have had a position an manager of the
recording plant of the Edison Company.
Q, 42 What was the first Company to exploit the making
of phonographs and phonograph records and supplies?
A The llorth American Phonograph Company.
Q 43 Did you kno7/ of any efforts of Mr. Edison to product
a record having a much finer groove than the standard
100 to the inch record, prior to his successful produotior
of the Edison Amberol record?
A I have heard several refiords that he had made having
to the inch prior to the experiments
200 threads which I referred to before.
Q, 44 What character of reproduction was obtained from
ouch record?
A All these records that I have heard were always
listened to through hearing tubeB. Heproduction of same
-24-
through a horn wan unsatisfactory and not sufficient volune
Benzler
Q, 45 Do you know Albert EshIkx and Frank Hofbauer?
A Yes.
Q, 46 How did you know them?
Benzler
A Mr. JShbIkx and Mr. Hofbauer were employed by me in
the recording department .of Thomas A. Edison, Incorporated!,
A Mr. Hxxkxxxwas employed as pianist for the Company
and Mr. Hofbauer as mechanic assisting me in my experiment!:
work.
Benzler
Q 48 V/as Mr. KXSJtxx in a position to learn the methods
practiced and the apparatus for use in the recording de¬
partment while he was there?
Benzler
A Mr. kJSXSSS- was in a position to observe how the
various singers wer c recorded, but I do not think he had
any knowledge of the mechanical end of the business.
Q 49 7/hat were the nature of Mr. Hofbauer 's duties in
the recording department?
A Mr. Hofbauer did all the repair work that was necossajj
in the mechanical line and also assisted in all experimen¬
tal work.
0. 5° 7?hat were his o -portunities for knowing the pro¬
cesses practiced and the apparatus used in the recording
department of Thomas A. Edison, Incorporated?
-2b-
A He had every opportunity to know^mechanical construc¬
tion of all apparatus which was used.
Q SI And what did his knowledge appear to ho of such
matters as it was disclosed to you in the course of his
work1?
A He oeemed to ho bright and thoroughly familiar with
the methods of recording used in thiB department.
Benzler
Q 52 Are fiaxlsr and Hofbauer in the recording department
of Thomas A. Edison Incorporated , now?
A They are not.
<J 53 How long have they been out of that department?
A Since July 1909.
( l S4 Under what circ instances was their employment in
the recording department of Thomas A. Edison, Incorporate i
terminated?
A I had heard that a hr. Hibbard who -had formerly
been connected with the Edison interests , and who was
then working for the U. S. Phonogaph Company, had made
overtures to Hr. HeBler and Hr. Hofbauer to engage them
for similar positions for hin Compuny. I then called in
my office Hr. Pesler and Hr.- -Hofbauer and advised them
±hx3t of what 1 had heard and told them they would have to
make up their minds within a few dayB , as to just what
they were going to do. They adviued me that they had
-26-
Ret pursuant to adjournment. Parties present as
■before.
ft 55 In your testimony you have used the expression
"master record". What do you mean by a "master record?"
A A master record is an original record from which
duplicates are made by various processes,
ft 5f> Referring to your answer to ft 41 in which you stated
that you had charge of the. duplicating plant of the
Rational Phonograph Company in 1897; how did you make
duplicate recrds at that time?
A By mechanical duplicating, that is to say, a master
record was duplicated by tracing the original record with
the reproducer ball attached to a lever, the other end of
which had a recording stylus attached thereto, and so
manipulated that it would record the elevations and
indentations of the master record on another blank. The
^result was called the duplicate record,
ft 07 'That was the character of the material used in
making duplicate records in this manner?
of
A The at duplicate records were made of mater ialft about
the satoe hardness and cutting qualities as the master
record.) As these duplicates were made by engraving the
wax-likp material which was used had to be sufficiently
The phonograph which has been shown to
the witness and conccrningnwhicli the
witness has testified, is introduced in
evidence with Die designation:
Complainant 1 s Exhibit Ho. 25 Edison
Style C Phonograph Ho. 21,289.
The sound box on said phonograph is
introduced in evidence with the designation:
Complaint* n t's Exhibit Ho. 26 Edison
Style C Sound Box Ho. 21,708.
Direct examination closed.
Cross Examination by Hr. Oberlin.
XQ 88 Do you remember over seeing before yeeterduy
afternoon, the particular Edison Style C Phonograph which
has just been introduced in evidence as Complainant's
Exhibit Ho. 257
A I do.
XQ 69 Wien?
A Lao t Saturday .
XQ 60 In that the only time that you remember seeing said
machine? ' '
A I have seen a number of theno machines at different
times, but cannot say that thin particular one was mnong
them .
or substantially the same construction vjith sound boxcB
such C4C the one at present mounted on thio machine, which
has been separately designated Compluinant 1 n Exhibit Ho.
26, prior to 1896, is this correct?
-29-
A I have .
XQ 68 You hove stated on direct exomirmti on that those
Wo del 0 or Style C phonographs were built by the Edison
Phonograph 'Vorks for the Edison United Phonograph Company
between 1898 and 1895. Were you connected with said
Edison Phonograph Works during that time':
A During the period come time in the latter part of 1888
1 wae transfored by Mr. Edison to the North American
Phonograph Company, and wan working under hie instructions
more titan any of the officers of the company, and I stayer
with that company until they went into the hands of a
Heceiver , September 1894. During the balance of that
year to May 1B97 1 wan connected with the finri of
'.Valcutt Miller & Company and the Phonograph Kecord Supply
Company, but during title time 1 was always on the
Edison pay roll doing special work for Mr. Edison, making
weekly visits and sometimes oftener, to the Edison factory.
Xq 63 When you state in your proceding answer that you
were "on the Edison pay roll", juut what do you mean?
A I received my pay envelope weekly at the office of
the Edison Phonograph Works.
Xq 64 What was this "Edison Phonograph forks'1 to which
you have been rof erring?
-30-
A The Kdi no n Phonograph Works wao n Company which
manufactured Phonographs, records and supplies under the
di root. -.on of Mr. Edison for the North American Phonograph
Company for use in the United States and Canada, and also
independently £kzxhx of the North America n Phonograph
for export.
XQ Gij I understand said Edison Phonograph Works is no
longer in existence. Is this correct?
A As far as I know, it is.
XQ 66 So far as you know were any of these Model C
machines manufactured in the United States hy any other
person or firm than said Edison Phonograph Works?
A 1 do not know of any other machines other than these
that were manufactured.
XQ 67 Where did the Edison Phonograph Works have its
factory at the time of which we arc 'speaking , namely
from 1098 to 109B?
A 'Vest Orange, Hew Jersey.
XQ 68 7/as it at this factory that you have heretofore
testified you made a number of musical records using this
Model 0 phonograph?
A The records I made with these machines were recorded
at the recording laboratory of the Worth American
Phonograph Company, Fourteenth Street, Uew York City.
-31-
XQ 09 That was the business of thin liorth American
Phonograph Company?
A To sell phonographs and supplies manufactured by
Edison Phonograph ’/forks .
XQ, VO Vfliat *»o the "Edison United Phonograph Company,
London, England" to which you have testified in answer
to Q 14 the records which you thus made, wore sent?
A A company organized to sell Edison phonographs and
supplies in some of the foreign countries.
XQ, 71 Bid this Edison United Phonograph Company have
offices in the United Staten, and if no, "hero were such
offices located?
A I do not know that thoy had any office to exploit
their goods, hut as I recollect they had oome headquarterc
of some kind at the offices of Seligman & Company, Bankert
Hew York City.
XQ 72 Is this the some Seligman & Company to which you
have referred on direct examination?
A It is.
XQ 73 Are Seligman & Company still in business in }Tev;
York?
A I don't know.
XQ 74 In what way were you"familiaf" as stated by you
in answer to Q 7 , with the Model C phonograph built for
-32-
the Edison United Phonograph Company between If. 92 and 189S
A My experience with the Model C machines wan that I
operated them in recording records with them.
XQ 75 You have stated in anawer to Q 10 that one of
the characteristic featureo of this machine was that it
had a recorder of a diameter of 20 to 22 thousandths of
an inch. How do you know this to have been the fact.
A I had been told so by Mr. Edison and by my exper¬
ience in looking at needles of these small diameters I
could note that it was much smaller than recording needles
which I had been in the habit of using which were 40
thousandths in dinroetcr.
X(5 76 Did you ever actually . • measure the recording needl
or stylus on one of these Model C phonographs?
A Hot that 1 can remember.
XQ 77 I take it, then, you have not measured such needle
or stylus in the case of the exhibit phonograph'' and
soundbox before us?
A I have not.
XQ 78 ’.'/ere the records which you have testified you made
during the period from 1892 to 1895 using such Model C
phonograph, all original records, that is records recorded
directly by means of the recording needle or stylus of
the machine'
A They were original reoords*
X<i 79 For what use were ouch recorde intended?
A I presume for entertaining purpooeo.
XQ QO Was this Model C machine, upon which I understand
the records thus made were likewise intended to ho ropro-
isixuduced, used primarily for entertaining pur pone o'?
A My impression is that the machine Was constructed for
musical records and for correspondence by mail mk using
the mailing tube record of small diameter.
XQ 81, This mailing tube record is the same as the "small
mailing tube of about three quarters of an inch in diam¬
eter" to which you referred in your answer to Q 10, is
it not?
A It is.
XQ, 82 About how many machines , if you know , of thi s
Model C type were manufactured altogether by the
Edison Phonograph V/o rks ?
A I do not know.
XQ 83 About how many records , if you know , were made by
said Edison Phonograih Works, for use on machines of this
type?
A As far as I know the Edison Phonograph Works did not
make any records for tliis machine.
-34-
4.
X<1 8 A ’Vail, wore the 75 or 100 records which you have
heretofore stated you yourself made, for use on thin
V odel C phonograph, the only ones made in thin country
for such use?
A As far as 1 know, they were-
X<i 85 And were these all shipped abroad or did your
some
employers rotainA such records'?
A These records were all xkiwp delivered to representa¬
tives of the Edison United Company and I was told they
were to he shipped fehroad.
XCl 86 Did you ever make any 200 thread reoordn except on
this ?’odel C type of machine as you have hereinbefore
testified, prior to your experiments on the no called
Ambcrol rooord?
A I have not.
XQ 87 Did you over make any record prior to the oxperimen'
Just referred to, with a record groove of a pitch material:
finer than 100 threads per inch?
A 1 have not
XCl 88 ‘That tv© principal kinds of records, having regard
to their shape, are at present on the market in this count:
A a round and a flat record.
XQ 89 How cloe might you describe the "round" record to
which you have just referred?
•y
■y?
-sr
A They are also called the cylinder recordn.
Xq 90 How else might you describe the "flut" records
to which you have just referred?
A They might also be called disc records.
Xq 91 ’.That kind of records, Vr. filler, cylinder or disc
have you had in mind in your testimony heretofore given
in this cause both on direct and cross examination?
A The cylinder record.
Xq 92 Have you any familiarity with the manufacture
of the oo called disc records?
A To a moderate extent.
statements
XO, 93 But the xk£hxkheh which you have heretofore made
v/ith reference to the thread-fineness on records with
which you have had experience has taken into consideration
only cylinder records , has it not?
A They have.
xq 94 Have the diBC records with which you have just
stated you have had some experience, had grooves of the
laterally undulatory or of the vertically undulatory type?
A Both.
Recess for luncheon.
xq 95 In your answer to q 29 you stated that if there
were any 200 thread records on the market in the interval
from 1895 to the time when the EdlBon Ambe rol records were
-36-
put on themarket in ±&m 19<)e you would have heard of it.
’■That reason have you for thin assumption?
A The Company hy which 1 was employed always made it a
point to purohase anything new in the way of records and
phonographs, an d I being particularly interested in this
particular line, I had an opportunity to keep posted in
this manner.
Xq 9 G Did you attend the ■World's ColumbianExposition which
wan held, I believe, during the year 1893 at Chicago,
Illinois?
A I did not .
XQ, 97 XHXJEKKXXMHK In your answer to Q 33 you have stated
that ?Xr. Edison was rather anxious "at that time" to
develop a record which would be of longer duration than
the one then on the market; to what time we re you
referring?
A It was some time during the interval of 1903 or 1904.
Xq 98 In this same answer you have referred to some re¬
cords of the 200 thread type then made by you "that neareife
approached our 100 thread rccoids" . In what way did you
moan that said 200 thread records approached the 100
thread records?
A I mean by this that the best results which were ob-
tained by various experiments during that period.
-37-
Xq 99 Pleaoo state a little more exactly to what results
you refer.
A When I Bpenk of best results 1 refer to such records
which were the results of our experiments . which when
reproduced nearest approached the 100 thread records then
on the market as to volume.
Xq 100 V/as a di ff erence in volume in the sound re¬
produced, the only difference that distinguished your
unsuccessful experiments from these which you state pro¬
duced results that nearest approached your 100 thread
records':
A Besides this their appearance, when inspected hy the
microscope, na.a very much different.
xq loi xiaHitfixxmiaxzMaiasHt^^
XeXXXXiOlXaiiX^XXh V/as the difference to which 1 have just
referred the only difference in audible results?
A Ho, the reproduction of the 200 thread record was not
an clear and had more of a tendency to rattle.
Xq 102 V/hat do you mean by "rattle" in your pre ceding
answer?
A An unmusical sound somewhat identical to the sound
you would get from loose parts in a diaphragm.
-CQ 103 V/hut , if you know, causes thin "rattle" to which
you have jUBt referred?
a This in due to the recording stylus jumping out of the
■mx and at timen cutting into the preceding groove.
.:<l 104 Are you familiar with the tom "echo" as employed
.n recording laboratory practice?
A I am. .
AQ 105 Is this "rattle" to which you have referred the
same an the bo called echo?
a It is not.
AQ 106 ’That do you understand to be an "eolio" in the
iaae of a phonograph record?
,l It ie caused by the recording stylus when in vi-
iration cutting into the adjoining grooves, and when it
8 reProduced , the reproducer at times not only reproduces
.he sound that dd is recorded in the groove but also
parts of the indentations from adjoining grooves..
..<i 107 A rattle, then, differs from an echo only in that
: t is an unmusical result flowing from this same cause or
condition, namely an overlapping in part of adjacent
record grooveis. Is this correct?
J. A rattling sound as I said before, is not due to over¬
lapping, but is caused by the xhxiebb needle jumping out
<f the wax and this occurred principally when the re-
XQ 108 In your answer to 53 you have referred to a nkc
made hy Mr. Edison's draftsman, showing oortain relative
amplitudes of recording needles. Did you see this
sketch yourself at the time?
A I did.
XQ 109 Have you seen it since?
A 1 have not.
XQ 110 Do you knov; whether it is still in existence?
A I do not.
By Mr. Oherlin:
Counsel for complainant is requested to
have a search made in an effort to locate
the sketch in question and produce it
for inspection and exarrination of the wit¬
ness thereon, in view of the testimony
regarding the same vouchsafed hy thi s
witness, and in view of its obvious in¬
terest.
XQ, 111 Were there any other sketches, diagrams or
like devices employed hy you or hy Mr. Edison, to your
knowledge , during the course of the experiments under
discussion?
A Not that I know of.
X(J 112 How would you show the amplitude of a recording
needle such as you have stated was shov/n on this sketch?
A By drawing a circle on an enlarged Beale with one
the
half inch to the thousandth to reu resent /.circular cut
vertical.
made hy the recorder needle, then drawing two ^parallel
-40-
1
the distance 'between these two parallel lines to repre¬
sent the pitch of the feed screw. Then draw a horizontal
line connecting these two vertical parallel linos at such
a place as will touch the bottom of circle already mention¬
ed.. Then draw another horizontal line parallel to the
liorizontul line already made at such a place that will
vertical ■
intersect theA parallel lines and the circle drawn to
represent the recording needle. The amplitude of this
needle will then be represented on the drawing as the
the
Jistance between^ two horizontal lines.
ICQ 113 \Vhat does the distance just referred to by
/ou as defining the amplitude of a recording needle, rep¬
resent in tlie case of a record groove cut by such needle*!
<a In a case of a record groove cut by a needle the
amplitude in the ftixiituaaB depth of the groove, but when
referred to sound vibrations recorded in said groove , the
amplitude is the distance a recorder needle travels up
md down in the wax.
CQ 114 What do you understand should be the relation
between the amplitude of a recording needle as defined by
fon in your answer to XQ 112 and the amplitude or depth
>f the groove cut thereby?
V The amplitude of the needle xtoiwx defined in my
mswer to XQ 112 is the limit of the depth thin needle
san cut without cutting into the adjoining groove . -
-41-
xq lib Is such a recording needle, however, in cutting a
record groove necessarily limited to a depth represented h f
its amplitude as defined by you, disregarding the possi¬
bility of adjacent grooves overlapping"
A It can cut deeper to permit the groove to overlap.
K4 l16 'That determines the actual depth to which a re¬
cording stylus will cut?
A M?JCKa;XH£ii>3irXXlUiXr;5itKaKiX.JittiaKScXH:(aXIX>;g^XXirXIJ;XiH
HXKXyilXi'iaX;{XXX:«IlXXffliS.pX«iit'^X>Iffit The cut made in.ihK
recording recoz-do is made in several ways, one is by a
method of a determined weight being properly connected
with the recording stylus, and another way i a by a screw
adjustment bavin g a sound box being equipped with an
advanced ball which rests on the blank independent of
the diaphragm, arid having a screw on the sound box resting
on the bar which holds the advanced ball in such a manner
that by operating thin screw it will allow the recorder to
cut as desired. The depth of groove used in the practice
of making phonograph records is cut to such a depth as will
not cut the adjoining groove, no that there is perceptiblj
wall between each groove. In the case of a floating
first
weight an fuTihxx described, the harder the wax which is
used the more weight is required and vice versa when
softer waxes are used.
Xq 117 Joes the, .character of the sound waves that Btriki
the diaphragm of a recorder have anything to do with the
depth to which the cutting needle or stylus of such re¬
corder will cut, assuming adjustment to have otherwise
been made in one or the other of the several fashions
which you have just described?
A The character of sound which affects the vibration
of the recording stylus does not affect the general
depth of the groove, but on certain heavy vibrations
it wi] 1 make a cut much deeper than Ska when no sound
occurred .XSEOO:
XQ 116 Do I understand from your answer to XQ. 116 that
in practically making phonograph records the recorder
meaning thereby the sound box, v/ith its various appur¬
tenant parts including the cutting or recording stylus ,
j adjusted so that suid’ stylus will cut a groove of a pre
determined depth without any vibrut ion of the diaphragm of
said recorder whatever?
A Yes, in recording the groove cut of a recording stylus
is determined before the sound vibrations are made.
XQ 119 ’Then sounds waves the n impigge upon ouch diaphragm
the depth to which the stylus cuts will be greater or less
than this normal depth which said stylus is thus sot arbi¬
trarily to cut, depending upon the character of those
sound waves. Is this correct?
A That is correct/
-43-
XQ 120 What is the approved normal depth to which the
recording stylus under present practice is set to eutV
of
A 7/e usually make the walls in the cut one-fifth of
tlie width of the cut .
XQ 121 What do you mean hy "walls" in the preceding
answer?
A The space between the grooves, that is the width of
the space between the grooves.
XQ, 122 The foregoing still does not make clear what is
the approved normal depth to which the recording stylus
under nr esen t practice is set to cut.
A The deptli of the cut in normal practice is about
seven eights of a thousandth, as near as I can remember.
XQ 123 How long has it been the "normal practice"
to make the normal depth of groove that just stated by youl
A As long as my experience has been in recording. .
XQ 124 And such experience goes back to approximately
what date?
A 1889.
XQ 12b And how long has it been the practice to make the
'walls "of the out one-fifth of the width of the out when
the recording stylus is cutting to thin normal depth?
A As near as I can remember as far back an 1900.
-44-
•A
XQ 126 Why, If you know, v.-aa it adopted as approved
practice to make the "walla" of the out one-fifth of the
width of the cut when the recording stylus iB cutting to
this normal depth?
A Because we seemed to get the best results from this
practice.
XQ 127 Then I take it that in commercial practice prior
to the date last named hy you, various other relations
between the "walls" and the width of cut were used. Is
thi s correct?
A It ±23 always the practice to cut "before this date,
ao deep as would produce the heBt result , and as the
machines at that time were not equipped with a microscope
the
I cannot definitely say just what, relation was prior
to that date.
XQ 120 Y/hat , if you know, led to the adoption as long
ago as 1889 of seven-eights of a thousandth inch an the
normal depth of cut for the recording stylus?
A The pitch of the feed screw regulates this depth to a
large extent, and in conjunction with the diameter of the
recording stylus.
XQ, 129 What has the pitch of the feed screw to do with
the normal depth of out adopted?
A If you are using a forty thousandths recording needle
and a feed screw 160 threads to the inch you cannot cut
much deeper than a thousandth of an inch without cutting
the adjacent groove.
XCJ 130 Hub the relation of the pitch of the feed screw
and the diameter of the recording stylus in jointly regu¬
lating the depth of cut adopted aB"norrnal" heen always
understood hy you and otherH experts in this art during
the term covered hy your experience which goes back
as stated by you in your answer to XQ 124, to 1889V
A I do not knov; what other experts in the art have
decided in this matter. The best records in the
cylinder line with 100 thread pitch and with a cylinder
inches
two and three-sixteonthsA in dicer, eter hove heen produced
in this manner.
XCi 131 Can you reproduce from memory the sketch which
you stated in answer to Q 33 Mr. Edison had hir, draftsman
make showing certain relative amplitudes of recording
needloB?
A I think I can duplicate the sketch very readily.
By Hr. Oberlin:
The witness is requested to make such a
reproduction of the sketch in question fol¬
lowing adjournment and to bring the same
to .our session v/hen we meet again tomorrow
morning .
XQ 132 Referring to the exhibit phonograph and sound box
-hftf-nrn- nn , nfunpl.a-tnant.J a mrVi-nrl-t-n TTnn , PR nnH PR, _
' -46-
do X understand that such machine is adapted for recording
on record blankB of the same size an are commonly used
in your recording laboratory?
A The same blanks used in our recording laboratory
can be used on this machine.
XQ; 133 And does such machine appear to be in running
order so that if fitted with a proper blank, a record
could be made thereon?
A It appears to be in running order.
XQ, 134 In answer to Q 37 on direct examination, you
stated that when you started in these experiments with
Mr. Edison you had no faith whatever in being able to
produce a successful 200 thread record . What were your
reasons for this lack of faith?
A At that time 100 threads to the inch was a very fine
fine
proposition and to make it twine as I thought
was asking too much both from the recording and the re¬
producing standpoint, and also having in mind the poor
success which was made of the Model C machine by the
Edison United Phonograph.
the
XQ 135 Have you any personal knowledge regarding JJSUK-
success or lack of success which the Edison United Phono¬
graph Company had with such Model C Machines?
A Hothing more than 1 knew that the manufacture of
euine had been diheontihued by the Edison Phonograph Works.
-47-
XQ 136 And when wan it that such manufacture was diocon-
tinued by the EdiBon Phonograph 'Yorks"
A I do not know the date. It must have been somewhere
in 1896 or around that time.
X<1 13? How long after 1896 did the Edison Phonograph Work:
continue actively in the manufacture of phonographs of
any kind?
A Up to this date if the Edison Phonograph 'Yorks
still existand have not heen combined with the Thoinuo A.
Edison Incorporated.
XQ, 138 Do you know what became of the mac tines of the
typo in question which were shipped to the Edison United
phonograph Company of London, England, an previously testi¬
fied by you?
A I do not know.
\7aB
XQ 139 ix theroanything peculiarly.- evanescent about the
wax recordB which you have stated you made to the number
of 78 ofc 100 on this Model C machine for shipment to the
Edison United Phonograph Company. In other words did
these records differ in permanency or lasting qualities
from other records which were manufactured by the Edison
Phonograph Works at the some date?
A The records which I made at that time were recorded
on practically the Bame material now in use and wore no
more fragile or susceptible to deterioration that I know oi
-48-
I
XQ 140 During your direct cxumi nation you had occasion
to apeak of "tube reproduction" and "horn reproduction".
In 1092 or thereabouts , what was the usual mode of re¬
production for records then currently in use in thin
country?
A I should say that hoth the machines were equipped
for tube reproduction, and they were slowly discarded by
user and new purehasersof machines and.: about 1896 there
ear
were few, if any^ tubes in use, users preferring the horn
reproduction.
XQ 141 Yfliat, if you know, led to the increasing use' of
the horn for reproduction purposes instead of the ear tube?
A He cording of records began to improve gradually so
that more volume could be obtained from them , so that they
could be heard satisfactorily with the horn.
XQ, 142 Yfere there not also improvements made about this
time in the horns themBelveB, better adapting them for use
in reproducing records?
A Hot to any great extent.
XQ 143 Have ear tubes continued in ubo down to the present
day?
A They are seldom used if used at all, by owners of ma¬
chines. There are exceptions to this where machines are
used in slot parloos .Xbxxxexhxxh
XQ, 144 Are not ear tubes also employed at the present
day on so called commercial or business phonographs used
for correspondence or rather for dictation purposes?
A They are. I principally referred to amusement pur¬
poses.
XQ 145 And I understand that one of the uses for which
this Hodel C machine wan designed was for dictating cor-
reBponderce. Is this correct?
Edison
A All machines manufactured by theA Phonograph Works
dur±nKx±hExpHriHtix were manufactured for dictating pur¬
poses as well as fo r amusement.
XQ 14G You huve s nted in your answer to Q 24‘'that
the records made by this Hodel C machine and which I made
v/e re records for tube reproduction and were not as loud
and did not have the volume of those on the market today".
Was thin not also true of most records, whether made on
this machine and of 200 threads per inch or made on other
machines and having 100 threads per inch, at the time
in question, namely, in 1892 or thereabouts?
A They were weaker records and did not have the volume o:
the records I was making at that time for the Jlorth Am¬
erican Phonograph Company on their machines which had
a
a feed of 100 threads per inch and <8x5iS stylus. 045" in di
A.M.
eter. Adj ourrteds fc to 10:15* January 25, 1912.
Wet pursuant to adjournment.
Present: Hr. H. II. Dyke
For Complainant
Mr. John F. Oberlin,
For Defendant.
XQ 147 During the course of your cross examination
yeaterday afternoon X asked you to make a reproduction of
the sketch you stated in answer to Q 33 Hr. Edison had
his draftsman make showing certain relative amplitudes of
rtiue recording needles. Have you made such reproduction
and if bo will you produce the same?
A I have and herewith produce it.
XQ, 148 Do I understand that the Drown sheet drawing wliih
you have just produced, is a substantial reproduction
in every particular of the original sketch made hy
Mr. Edison' 8 draftsman? If not, indicate any differences
"between said reproduction and the original sketch.
A This is a reproduction of this drawing made on
the same kind of drawing paper and is duplicated the same
as I saw the drawing at that time with the exception
that it had no markings oniit to describe one circle from
the other as is herewith shown. The scale may have also
been somewhat larger than the one shown on this drawing.
XQ- 149 I take it then, that the notation appearing at
the lower right hand corner of thin reproduced sketch
an d reading"Scale one inch to the 1/1000 of an inch11
-51-
han been placed on thin sketch by you merely to indicate
the scale of the present drawing and that no such notatin
appeared on the original sheet.
A II o such notation appeared on the original sheet.
XQ 150 Furthermore I take it, that \vhile the designation
applied on the present sketch to the several curves ad
the indications of distances between certain of the lines
v/ere not found on the original sketch you did by word of
mouth or otherwise have explained to you what these
curves and distances were intended to represent. Is this
correct?
A I was present when the original drawing was made
when Ur. Edison gave instructions to his draftsman to
make these curves and I understood at the time what
they represented.
XQXX2X By Hr. Oberlin:
The drawing or sketch which has
been produced by the witness is offered
in evidence as an exhibit by defendant,
and the Notary is requested to mark the
same :
Defendant's Exhibit No. 1, Miller's
Reproduction of original Edison sketoh.
XQ, 151 You say you were present at the making of the
original drawing or sketch, Mr. Miller?
A 1 was .
XQ, 152 Who was the draftsman who made such sketch.
A I believe his name was Mr. Herter, I am not sure' how
-52-
I
the name was spelled.
XQ 153 Do you know where this Mr. Herter now is?
A I So not.
XQ 154 Wub anybody present at the making of this
sketch besides yourself and Mr. Edison?
A Mr. Herter was the only other person present
besides Mr. Edison and myself.
XQ 155 Did you do all of the exp crimen ting for Mr.
Edison in connection with the development of the Amberol
record so called, concerning which you have testified in
answer to Q 33?
A As far as I know I did.
XQ, 156 Did you have any assistance in this work?
A ITo, most of the preliminary experiments I tried
myself personally. Of course I had "talent" to assist
me and possibly X might have had one of my assistants
to operate my machine for me at *k±x times during my
experiments.
XQ 107 Were these experiments conducted on one of
your regular recording machines , or did you make a
special machine for the purpose?
A There was an alteration made in our regular recording
machines to make the feed 200 threads to the inch.
XQ 156 What was the nature of this alteration?
i
A A feed screw 100 threads to the inch was attached to
a parallel
our regular phonograph "body by means of a casting inAline
with the main shaft of the phonograph. This extra feed
screw was caused to revolve hy means of a sprocket chaim
connected with the main drive and geared in the relation
of two to one, so that v/hen the mandrel made one revo¬
lution, this attached feed screw would make hut one half
revolution. The recorder was caused to feed along from
this screw hy means of a feed nut engaged with this screw
and at to. che d to the carriage which moved with the records
XQ 159 After making this alteration in your regular
recording machine so as to change the rate of feed in
the manner you have just described, what was the next
step in your experiments?
A The next step was to try to make some 200 thread re¬
cords for use on this machine and the recorder equipped
with a needle 20 thousandths of an inch in diameter.
XQ 160 This I assume was the same recorder as you regu¬
larly used in recording for 100 thread records. Is this
correct?
stylus
A It was with the exception of the arm which held
the stylus somewhat smaller.
XQ, 161 About how many records, if you remember, did you
make with the machine arranged as before described and
using this recorder with the recording stylus of a diainete
-54-
20 thousandths of an inch.
A I do not remember that I made any complete records
for the reason that the results did not justify it.
XQ 162 Please state for us in some detail just what you
did in the way of experiment with the apparatus you have
just described as having been first tried out by you.
A The firBt step in preparing to make phonograph records]
was to test out your recorder, which is done by allowing
the recording stylus to cut in talking and singing with
the machine, and making detailed adjustments of the re¬
corder until the best an d most satisfactory results are1
obtained from the recorder. In my experiments with
this apparatus above described I found that I could not
adjust this apparatus so that I could obtain the results
as regards to volume compared with the record we were
then making on our 100 feed machines.
XQ, 163 Did Kr. Edison personally follow you with the
making of these experiments with the apparatus under
consi deration?
A He did.
XQ 164 How long a period of time was occupied in your
experiments upon tlii s f oim of apparatus?
A The experiments were continued as near as I can rcmom-
ber from Bix to eight weeks before it was found out what
the trouble was .
-55-
XQ 16b During the time that these experiments were going
on were you giving your entire attention thereto or
did you have other duties that at least partly occupied
you?
A Most of my time was used with these experiments hut
not all, as I was at that time manager of the recording
plant and had to supervise it.
XQ 166 State as nearly as you can , the date when these
experiments were first begun.
A I would say, as near as I can remember, the latter part
of 1903 and the beginning of 1904.
XQ 167n Have you no records, or had your Company* the
complainant herein, no records which would show exactly
when sai d experiments were begun as well as how long
they continued?
A I know of no such records.
XQ 168 Is it your custom to make no record of experimental,
work of this kind?
A X At that time I did not make any notes of my ex¬
periments.
XQ 169 Do you know whether or not Mr. Edison kept any
record of these experiments?
A I do not know.
XQ 170 From your association with Hr. Edison do you know
whether or no t it was his custom to keep a record of ex-
-56-
periments made by him or under his direction?
\ I have seen numerous note books in which he has jotted
down experiments which ho has tried nx and is to be tried
but am not familiar with his particular system which he has
Sq 171 From your acquaintance with his methods, to
vhii.h you have just referred, would you not expect that he
nade notes of this kind concerning the experiments under
consideration?
\ I-x?mxidxr.0tx±teKkXHXxfc!u^xxXxxkixxk±xxicjiHxiXxkEX He
probably would make a note of an experiment of this kind
if he had thought to do so.
ICQ 172 What season of the year was it when you began
these experiments as hereinbefore stated by you?
A As near as I can remember, I think it was in the Fall
of *8SS 1903.
ICQ 173 What makes you think that you were occupied with
these experiments for six or eight weeks?
\ That is my recollection from the amount of experimenting
that I did it seemed to me that it wub about that long.
ICQ 174 You have, however, no very exact recollection on
thin point, have you?
1 I am not positive.
CQ 175 Could the time you were thus occupied have been
Longer than six or eight weeks?
3rfe — la s t e d— nw&h— 1-oago r f-rom — G-owe _
-57
of the experiences I have had with experiments, hut I
think eight weeks is the maximum in this case.
XQ 176 Idight not the time actually consumed have been
less than six weeks?
A As near as I can remember ”»e were at least six weeks
experimenting with this particular apparatus.
XQ 177 ’Shat kind of selections, that is, what kind of
sounds did you try to record when you began these experi¬
ments?
A Talking and singing v/ith piano accompanment.
XQ 178 Did you try out any seledtions that v/ere exclu¬
sively instrumental?
A I did not.
XQ, 179 Who , if you remember, did the talking for these
experimental records?
A 1 did the talking but I do not remenber who did the
singing.
XQ, 180 Who played th e piano accompaniment for the
singing,
A I do not remember.
XQ 181 Who was your regular accompanist at the recording
laboratory at the time the experiments were usually
conducted?
A I am not sure at this time that we had a gggxixx
permanent accompanist at the recording laboratory at that
time. We had Beveral piano players employed at that
time.
Xq 182 Would the records of your laboratory, or of the
Edison Company, show who was employed in this capacity
at the time in question?
A I think they would.
By Mr. Oberlin:
Counsel for complainant is requested
to have a suitable search made either
by the ’.vitness or some other proper party
for the records bearing on this matter
and to produce the same for the considera¬
tion of counsel for defendantbef ore the
examination of the present witness is closed.
XQ 183 Please state where these experiments , concerning
which you have been testifying, were conducted.
A At the recording laboratory of the national Phonograph
Company, 69 Pourth Avenue, Hew York City.
Xq 184 What kind of a phonograph did you use in testing
out the experimental records made by you sb to their .
reproduction qualities?
A The same style of machine as is used to reproduce a
two minute record, with the exception that the feed was
changed to 200 threads per inch, and the reproducing
diameter
stylus to 20 thousandths of an inchA or about .
XQ 185 Well what kind of reproducing stylus did you regu-
darMy— omploy— in— this— macbineiLf.nr-. _rpp rn ri nn ■! ng -hvn minute
-59-
records?
A Since the two minute records hove heen on the na rket
a round "ball was first used 40 thousandths of an inch
in diameter. Later on a kxii "button ball was used which
had a diameter of 40 thousandths of an inoh transverse of
the groove and a xxaas curvature of smaller radius longitud¬
inally of the record groove, the diameter of which
curvature was about lb thousandths. Just which ball was
used at this time I would have to look at the records to
learn, but I am of the impression that a button ball was
used.
XQ 186 Of what form was the Btylua of a diameter of 20
or about
thousandths of an inchA which you have stated was used
in testing out the experimental records under considoratio
That is was said reproducing stylus of the round form
or button ball form?
A The reproducing stylus was round. By round I mean
spherical .
XQ, 187 Who, if you know, made the cutting and reproducing
styluses , both of which you have testified were approximat
20 thousandths of an inch in diameter, that were tieed in
these experiments?
A These recording styluses and reproducer balls were
made at the Factory. I do not know who made them.
i in charge of nth e department
-60-
at the factory that made such styluses?
A I do not.
XQ 189 As a result of your experiments with these cutting
and reproducing styluses of approximately 20 thousandths
of an inch in diameter, did you come to any conclusions
yourself as to why the records therewith made and reproduc!
bd
did not give satisfactory results, as you have hereinbefor
testified?
A At the time these experimental records were maite
examined under the microscope it occurred to me that
something radical was the matter, and I discussed with Mr.
Edison the looks of what I saw in the microscope, and he
suggested that it he laid out in the drawirg that I xkp
spoke about before, hut I could not understand at the
time why it was not possible to get as good a record with
in
a 20 thousandth needle s£ £00 threads as we did with the
40 thousandth needle in the 100 thread.
XQ, 190 What was the appearance or looks of the record as
viewed by you in the mecroscope, which you have just
stated you discussed with Mr. Edison?
A I believe I answered this question before in my
direct testimony. The best results that I obtained
in my experiments which were selected by listening to
them with the reproducer, I found, by inspection in the
mluruucope that -the vibrations were— ext-grtsd-vel-y-cu-t-t-ing -
-61-
to
XQ, 191 Y/hat was the normal depth of grooveNv/hich you set
this cutting stylus of a diameter of 20 thousandths of
an inch, while you were making the experiments under
consideration?
A Everything was experimental. All sorts of depths
were tried. The best results were those made with a
deep track.
XQ, 192 Then it was when the cutting stylus was set to
normally out a deep track "that the vibrations were
extensively cutting into the next groove and that a
greater part of the record showed that the recording
stylus jumped out of the wax," was it not?
A Thi3 is true.
XQ 193 The vibrations of the recording or cutting stylus
when a sound is being recorded carry the cutting edge
of such stylus both above and below this normal depth
of cut to which the stylus iB set, do they not?
A They do .
XQ 194 Y/hat relation is there between the distance to
which the vi brations of the recording Btylus carry the
cutting edge of the latter above the normal depth of groo-\
to the distance which said vibrations carry the cutting
-62-
edge below such depth?
A I do not know and I do not believe anybody else knows.
XQ 195 It is not considered good practice, however,
in recording, to have the vibrations of the stylus carry
its cutting edge above the normal depth of cut so far as
to cause the stylus to entirely leave the record blank
is it?
A Records are better when the recording stylus does
not jump out of the wax.
XQ, 196 A part of your problem, then, in making the be-
f orementioned experiments, was to secure an adjustment
of the recorder such that the recording or cutting
DSxiMKxrEEExita! stylus would not jump out of the wax,
that is, leave entirely the record blank, was it not?
A It waB.
XQC197 It was also a part of your problem, was it not,
to secure such an adjustment of the recorder that the
or cutting
reoordingA stylus would not cut record grooves that in
part overlapped?
A It was.
XQ 198 But you found, .that* using a cutting stylus having
a diameter of approximately 20 thousandths 6f an inch,
that where the best results were secured in the record
when reproduced, the cutting stylus had jumped out of
thu wax , did y uu no t?~
A I found this true.
XQ 199 You also found under the' circumstances stated
in XQ 198 did you not, that there was more or less over¬
lapping of adjacent grooves?
A I did.
XQ 200 After making a microscopic examination of irhK thots
records cut with a cutting stylus having a diameter of
approximately 20 thousandths of an inch which gave the
hest results upon reproduction, and finding aB just statec.
by you, that in such records the cutting stylus had jumped
more or less out of the wax, and also that there was more
or less overlapping of adjacent grooves, what did you
next do in the course of your experiments?
A As near as I can remember, the impression that I re¬
ceived from this examination, indicated to me at first
that the sound box was too sensitive, which I partly
attributed to the smaller diameter of needle than I had
been accustomed to use . I tried experimenting making
different kindxxMfxsKx ly constructed sound boxes , tried
various recording horns and tougher raxes, but did not
get satisfactory results until Mr. Edison suggested that
I use a needle having 10 thousandths of an inch.
Recess for luncheon.
|
XQ 201 It was well understood in the art, was it not
Mr. Miller that the time that the exp e r im e nt nun de r con-
were
sideration ms undertaken in the latter part of 1903 or
thereabouts, that in making phonograth records the
recorder should he so adjusted that the recording or cut¬
ting stylus would not jump out of the v/ax .
A It was known that best results could be obtained
when the recording stylus did not jump out of the wax.
XQ 202 It was also well understood at the time
should
in question, wan it not, that the recorder xinotS be adjunte
so that the recording or cutting stylus would not cut
gnooves that in part overlapped?
A It wan.
XQ 203 Is the jumping of the recording or cutting
stylus to which you have referred, associated with deep or
shallow gouges • according to your observation?
A Principally with dee p gouges . or indentations.
XQ 204 In other words the vibrations of the cutting or
recording stylus would appear to go to an extreme limit
downwardly as well as upwardly in the case of such
jumping, referring to the normal depth of cut. Ib this
correct?
A ixxatkEXXOTixitHxihH I do not understand the question.
XQ 205 Does the width of a record groove cut with a
d
-65-
stylus of circular or approximately circular cross section
such as those under consi deration "bear any relation to
the depth of cut?
A It does.
XQ 206 What is this relation?
A The deeper the indentat ion the wi der the groove .
XQ, 207 Then where jumping occurs the gouges or indentatia
between the jumps would not only be relatively deep as
indicated by your answer to XQ 203 but also relatively
y/ide, would they not?
A XKKaXXXXXXXOSKXXXXKXXgXIjIHXXXXXXHbiaiKXXKXXraiiS
XXXXXE^JCX^X2S®affiXabXKXhX)COmKXaXXXgX)5XgX . The
gouges themselves would be relatively wide as well as
deep, that is relatively to the normal width and depth
of the groove.
XQ 208 I call your attention to Complainant's Exhibit
Ho. 21, Surface view of Defendant's record Ho. 1236,
magnified 100 diameters, and ask you to state whether you
find illustrated thereon any instance of the "jumping"
of the cutting stylus such as we have been discussing.
A I do see theee places which I would consider jump-outs
XQ 209 Can you designate by any marks appearing on this
Exhibit the spaces to which you refer?
A One jump-out is between gouge llo. 1 and gouge Ho. 2.
-66-
and 1 respectively.
XQ 210 Do the gouges 1 and 2 to which you have just
referred, appear to he of abnormal width compared with
the width of the grooves appearing on the Exhibit in
question?
A They appear to be wider than the normal width of
groove.
XQ 211 In your answer to Q 33 you have stated that
"About that time (meaning the time while you were engaged
in these experiments) Mr. Edison arranged a microscope in
such a way that a phonogaph record could be easily .
inspected by it". Had you ever used a microscope in
your work of making records prior to this date in order
to ascertain the character of the record grooves?
A I think Mr. Edison had one of these microscopes for
his personal use at his laboratory, but I had none for
my work.
xq 212 Do you mean that you had never used a microscope
in connection with your work prior to the date mentioned?
A Hot for my regular commercial work or as a tool in my
recording department.
XQ 213 Hot even for experimental work in nuch department?
A Ho.
XQ 214 Do you know i»hether or not microscopes had been
-67-
A
m
d
"!r‘ Edi80n in investigating the character of the groove
on sound records for phonographs?
A I think they were used in experiments with the 200
molded record.
XQ 215 The general character, then, of the record groove
in the case of records of the kind under consideration,
that in, .here the record was made with a cutting stylus
of circular or substantially circular cross section,
was well understood at the time in question, was it
not? i refer more particularly to the conformation of
the groove, the effect produced by jumping of the cutting
stylus , and the possible overlapping of adjacent grooves/
A It was known at this time that overlapping of a groove
caused a repeat in the record and that jumping out caused
an unclearness or rattle when reproduced.
KQ 216 My preceding question does not seem to have been
fully understood by you. What I meant to inquire was
prior to th, oo,. ln „uostion, ttc „„„„„„„ „
*o record Groove, or or the r.cord.d .urrooe . *0l.
'-or. imping or th. cutting or ovon.pping hud
ccurred, was understood.
lf ^ thlS timS 1 had looked at a record through a
ioroscope I could Mtatw* recognise placed with
efects as above mentioned.
-68-
XQ 217 At what stage exactly, in your experiments herein¬
before testified to as having been made in an attempt
to perfect the 200 thread record: , did Hr. Edison have
his draftsman make the sketch, a reproduction of
v/hich you have produced and viiich is now in evidence as
Defendant's Exhibit Ho. 1, Killer's Reproduction of
original sketch.
A I think I have answered this question before that
after this drawing referred to was made Mr. Edison gave
instructions to have some laxthpjnmndikJiXHixaKxxnEk
recorder styluses of a diameter of ten one-thousandths
of an inch made and suitable reproducer balls to fit grooc 3
made by these styluses . It was but a very short time ,
say not more than two or three days before the results
I wxKX3aktaxninjs obtained with these new styluoes were
equal to those results which I was making with 100 feed
and the 40 thousandths of an inch diameter recording atylu;.
XQ 218 You have stated that you were present when the
original sketch just referred to was made by Hr. Edison's
draftsman . Where was such Bketch made?
West
A On the second;floor of Mr. Edison's laboratory ,A Orange
New Jersey.
XQ 219 Do you remember any circumstances connected with the
actual making of said sketch?
-69-
A I was talking with Hr. Edison at the time regarding
the experiments and he, during the course of conversation,
said to me, "Come up stairs and I will have Herter lay
it out on a drawing hoard". He told Mr. Herter what
circles he wished to have drawn and gave him detailed
instructions,
XQ 220 V?as such original drawing in pencil just like your
reproduction?
A It was.
XQ, 221 Do you remember the order in which the several
lines and curves which go to make up thin sketch were
drawn in the making of said original lines?
A I do not.
XQ 222 ’/fas there any delay involved in your being fur¬
nished with cutting styluses having a diameter of ten
one-thousandths of an inch, after directions for the makirj;
of such styluses had been given by Mr. Edison?
A As near as I can remember the sapphire department did
have some trouble making theee styluses and there was
some delay before I received satisfactory ones, but just
how long I do not remember.
XQ 223 Had you ever prior to receiving these styluses
of a diameter of ten one thousandths of an inch, used
styluses for cutting record grooves having a diameter
.less than anproxiimately _ 20 thousandths of an inch which
-70-
is the
diameter you have heretofore testified has been used in
two
cutting ax£ hundred thread records?
iSb I had not. As far as I can remember I know of no
a
instance where I have used ±kE recording stylus of a
than
smaller diameterA20 thousandths of an inch prior to
this time.
XQ 224 Do you understand that the suggestion for using
a stylus having a diameter of approximately ten one-thous¬
andths of an inoh was derived from the sketch your re¬
production of which has been introduced as an Exhibit?
By Mr. Dyke:
Question is objected to on the ground that it
idsxk calls for the conclusion and not
the knowledge of the witness.
A It was.
XQ 22b Did Mr. Edison HkjKEtxtnxtiiExix suggest the use
of a recording or cutting stylus having a diameter of
ten one-thousandths of an inch immediately upon the
completion of the sketch in question?
A He did.
XQ 226 Did he direct explicitly the placing of every
line or curve which appeared on said sketch?
A The original Sketch he did.
XQ, 227 Do you remember how he directed the curve to be
drawn which on your reproduction of said sketch which
-has-been -i-nt-r-oduocd imte-ovidcnoo ao Dof ondnnt-«-B-Exhiblt -
-71-
Ho. 1 is marked "lO/lOOO needle 10" in diameter".
A I do not remember.
XQ 228 How Aid you direct oaid curve to be drawn or how
did you draw the oame, when you had thin reproduction
made?
A This drawing is made on a saalc of one inch to every
thousandth. XhKXJsrrElK This drawing wan made by first
drawing the perpendicular line, which 1 am now marking "A".
"B"
A circleAwas then drav/n 40 inches in diameter,
center
xEXtiEBixiiHH with its KissiE on the vertical line.
Two vertical lines "C" and "D" vie re then drav/n parallel
with the first vertical line "A" and vat:, equal distances
each v/ay, the distance between "C" and "D" being 10 inches
or equivalent to ten thousandths of an inch, which in
this drawing is to represent the width of^lOO thread
record. A horizontal line "E" was then drawn connecting
the vertical lines "C" and "D" and touching the curved
line "B" at the point "F" . Another horizontal line "0"
was drawn connecting vertical lines ,"C" and "D" at issns
these two points where the curve intersects Bnid lines at
"H" and "H" prime. The distance
HXxanpc±±±miHX between the lineb"F" and "G" Bhows the
distance the recording stylus will travel from the maximum
depth of groove to the surface.
-72-
I next drew two vertical lines "J" and "K" at equal
distances from the vertical line "A" , the distance between
these two lines being five inches , representing five
thousandths of an inch, the width of the 200 thread feed.
It was then determined by setting a compass BnxXhat in
such a manner and that the points were at ouch a distance
that by placing one of its points on the line "A" it
would draw a circle through the points "IS" "E" and "L"
and on measuring xxikxthKXEuwpKSH it was found that
the diameter of this circle was 10 inches. This last
curve is the one which you refer to in your question.
XQ 229 Does the description which you have just
given of the manner in which you made thin reproduction
of the original Edison sketch, so far as it goes, alno
describe the manner in which such original sketch was
drawn?
A As near as I can remember, it does.
XQ, 230 I note on this exhibit sketch a third circle or
part of a circle also pasbing through points "M" and "L"
but not through the point marked "F". Please state what
this circle iB intended to represent.
1 This circle which I mark "N" is 20 inches in diameter
representing a needle of 20 thousandths of an inch in
liameter .
XQ 2.51 When in your answer to XQ 228, you stated that
the lines
Aix distance between, ”C" and "D" on thiB Exhibit sketch
is to represent "the width of a 100 thread record" ,
what di d you mean?
A I made a misstatement; I meant to say that the
distance between »C" and "D" shnsrasd represents the pitch
maximum
of the groove on a K>0 thread record, that is the, width
of groove
.which can be cut on such a record without overlapping
the adjacent groove.
XQ 232 Similarly when at another point in this answer to
XQ 228 you stated that the distance between lines "J"
and "K"repreBcnted "the width of the 200 thread feed",
what did you mean?
A I meant that this was the maximum width that could be
cut by the stylus without overlapping in the case of a
200 thread record.
XQ 233 This morning, counsel for complainant was re¬
quested to have a suitable search made either by you
or some other party, for records showing who was employee
at your recording laboratory as piano nplayer during
the time when the experiments on the so called Amberol
or 200 thread records were first taken up by you. Has
any Buch search been made, and if so, with what results?
A Search has been made and the records show that during
— t-fris— • t^te— ^i-^A-l-bert- BenB-ler -■was-our-p-i-ani-st-. - -
-74-
XQ, 234 Do said records chow that any one besides Mr. Ben
Xer was employed at this time in this capacity?
A There was another piano player at the time by the
name of Mr. Wangeman but most of his time was taken up
in experimental work. He has since died.
XQ 235 Was Mr. Benzler regularly employed?
A He was .
XQ 236 During what time v/as he a regular pianist
at your laboratory?
A 1 do not know v/hat you mean by "regularly
employed". We used most of Mr. Benslers time from a
period in 1899 until Julyx±J$rt 1909.
It is stipulated ±fc by and between
parties hereto, that the records of the
complainan t Company show that A. Benzler
was employed in its recording department as
a pianist on July 17, 1899 at a salary of
$20.00 per week; that on January 18, ,1902
he quit such employment; that on August 4, 1902
he was re-employed at the Bame salary which
on February 23, 1903 v/as increased to $30.06
per week; that on October 3, 1904 his salary,
which previously was charged to the Orange
office, was changed to the Hew York pay roll
of the complainant Company, aid that on July 10,
1909 he quit the employ of the complainant
Company, hi s employment by such Company being
continuou s from August 4, 1902 to July 10, 1909.
XQ 237 In your answer to XQ 79 you have stated that
the 200 thread records made by you during the period
from 1892 to 1895, using the Model C Edison phonograph,
-75-
any of the aelectiono on said records.
A No sir, I do not.
XQ 238 Do you remember timing the length of playing or
reproduction of any of Baid records?
A 1 knew at the time the length of duration of this
record, but do not remember it now. This information
was necessary in order to time records which were to
be played on them.
XQ 239 Is it your recollection that said records were
capable of playing for a longer or shorter time than
four minutes?
period
A It was for a longer ±±ke than four minutes. It
possibly ran five or six minutes.
XQ 240 How di d the dimensions of these early £00
thread records compare vrith those of the present Amberol
record?
A The dimension s were about the same size, but in
those days records were recorded at a speed of i from 144
to lbO revolutions per minute.
XQ 241 Can you state what surface speed of the record
past the stylus, this number of revolutions per minute j?h
gave with records of the kind under consideration?
A I do not remenfoer.
XQ 242 This would be, however, a matter of simple
-76-
A It could be readily figured out.
XCJ 243 What is the number of revolutions per minute
and surface speed used in playing your present Amhcrol
records?
A The speed used in playing our Amherol records is
160 revolutions per minute, and as near as I can
recollect the surface speed past the record stylus some¬
thing like 1120 to 1140 inches per minute.
XQ, 244 What is the number of revolutions perminute
and surface speed employed in playing the present
Edison Standard record, which I understand has 100 threads
per inch, and is of approximately the same dimensions as
the 200 thread, or Amherol record?
A The speed and dimensions arc the same in the case of
the Standard as of the Amherol records.
Adjournment to 10:30 A .It. January 26', 1912.
By reason of pressing engagements of the witness
and upon agreement of counsel, the witness Mr, Killer, is
excused from the stand with the understanding that he iB
again to take the stand uponmeonvening on the morning
of Saturday, January 27, 1912, and that his testimony
notwithstanding the interruption, may he printed consecuti
ly in the record.
-77-
Cross Examination of J:’r. Miller continued toy Er.
Oberlin.
XQ 245 Please state, if you know, whether hearing tutoes
or horns are used for reproduction purposes with the
type of commercial machines at present manufactured toy
your company.
A These machines are furnished with the recording
arm and a hearing tube ao far as I know.
XQ 246 Is it necesoary where hearing tutoes ure
used for reproduction purposes, that the volume of the
reproduced sound toe as loud as where a horn is employed?
A It is not.
Xffc 247 Is it desirable that it be as loud?
phonographx for commercial purposes, has compart
nd like places for dictating lei
machines arc used to a largen extent
for amusement purposes than for commercial use .
XQ 249 Do you know what were the original expectations
- of- your-cpmptCTiy-ErB" to "the "prospective extent~of use of — —
-112-
lommercial machines?
i I do not know.
CCl 250 Have you made any further endeavor, since you
/ere last on the stand, to recover the original oketch,
i reproduction of which you have made and which in now
In evidence as Defendant's .Exhibit Ho. 1?
\ I hav e not.
251 You have heretofore stated on cross examina¬
tion that you do not remember that you made any complete
records in the course of the experiments which you began
in the latter part of 1903 or thereabouts, to produce a
200 thread record. How many partial records, that is,
dow many different selections did you record in the course
of these experiments?
A Ho complete records were m ade that I can remember,
and as to the number of partial records made I do not
remember.
XQ 252 Can you give us any idea as to the number of par¬
tial records thus made?
A I cannot.
XQ 253 Was the phonograph which you used in testing out
these experimental records as to their reproduction quali¬
ties, one of your standard makeB of machines Bave for the
changes indicated by you in answer to XQ 134.
-113-
A It wan.
XQ, 2t>4 V/hich standard make of machine was it then, that
is what Tias its trade name?
A I think it was called J.'odel U hut I will not he
certain about it. It was the same style of maohino which
is today called the Triumph.
the
XQ 255 Did you use sec microscope which you have heretofore
stated hr. Edison furnished you in connection with these
experiment is from the very first, or only at a later stage
in the course of said experiments?
A As near as T can remember it was at the later stages
these
of ixix experiments. 1 also, wish to state that since
giving my testimony day before yesterday, I have found
hud
out that we haxK a microscope of this kind in our depart¬
ment some considerable time before experiments were made
on these 200 thread records. They were used by us to
inspect the masiterxxxsdx records made for our two minute
or 100 thread molded records, to nee if the cut was free
from shades or blinds. A blind in a master record is
caused by some foreign matter sticking to the cutting
edge of the recording stylus or noodle and causing the
needle to cut a ragged groove. A"shade" is practically
the same defect but very small indeed. These "shades"
do not affect tho sound reproduction, but at that time
with this defect,
XQ 256 Was tliis microscope wViich you now state you had
been using in your department some considerable time befoo
experiments were jn&de on these 200 thread records of the
same magnifying po-ver; ns the one which you used for
examining, such" experimental 200 thread records'?
A It was.
XQ 257 But it is still your recollection that l!r. Edison
furnished you with a microscope specially for examining
is
these latter records , xhx it?
A Hr. Edison furnished me .with this microscope and not
specially for this purpose, as I stated in answer to Q 33.
nfor
The special purpose with which Mr. Edison furnished
me with this microscope was to inspect the masters for
the 100 thread records which we were to use for molding px r
poses, when *kx»BXXKXHXtfK we started t o make masters
for this special .folding process , and I used this Bame
microscope later in connection with the Amberol.
In giving my previous testimony I have oonfused the be¬
ginning of work on the molded 100 thread record with the
beginning of work later on the Amberol record, and X
only had this one microscope for those purposes.
XQ 258 But I understand you did not use this microscope
to examine the earlier experimental record which you made
when you began-experimenting w-l-th- ths 200 thread- or Am- -
-115-
berol record, is this correct?
A As far an I can remember, it is.
XQ 259 You did, however, test out these earlier records
as to their reproduction qualities and found them deficieni
in volume. Is this correct?
A It iB.
XQ 260 It was then that you used the microscope to examim
the record grooves, waB it, with the results that you
have previously testified to,
these particular . the making of recorc.s
A WhenA experiments were tried "that isA200 thread .with a
20 thousandths needle, two or three diaphragms were adjust-
The records
ed with these needikos and tests were made of them. Shay
were found to be rather weak and the loudest of them did not
seem to be perfectly clear and ±hx would sound what we
call in the laboratory term, "sensitive". We would then
rebuild these diaphragms, make various adjustments
on them, try them again with no better results. Also
different horns were tried and harder waxes and I think
after these experiments were concluded it was then. when
the microscope was used. This might have been a week or
it might have been two weeks alter the first tests were made
?7hen thi s microscope wub used I continued with experiments
with still harder waxes and with no better results, al¬
though the harder waxes for a time did se’em to mako some
slight Improvement oveFitaaateMrf the softer waxes . _
-116-
XCJ 261 How lone; was it alter you first used the micro¬
scope for these experiments, "before the drawing or sketch
was made concerning which you have heretofore testified?
A As near as I can remember, four or five weeks.
XQ, 262 Did you report the results of your examination
of these experimental records under the microscope at onee
to I'r. Edison?
A 1 did not. 1 usually reported to him the results of
the sound reproduction.
XQ 263 How frequently did you make these reports
to Mr. Edison during this- period: of experimentation?
A Once or twice a week.
XQ, 264 How soon was it after you reported the results
of your examination of these records under the microscope
to Mr. Edison, that the drawing or sketch above referred
to was made?
A About half an hour.
XQ, 266 And immediately after this drawing or sketch v/as
made as heretofore testified to by you, you were directed
to use a stylus of smaller diameter then you had been
using theretofore. Is this correct?
A It is.
XQ 266 Did you offer any suggestions to Mr. Edison at the
time you reported to him the results of your examination
• of th cs-e—expe
-m-fe-roe-eope?-
A X do not remember. I might have said that the needle
positive
was too big which we were using, hut I have no^recollucti
XQ 26? Had. you discussed the size, that is the diameter
of the recording needle with Mr. Edison, at any time
during the course of these experiments erior to the time
when you thus reported to him the results observed
■by you through the microscope?
A I did not.
XQ 268n Was the Hr. Henzler to whom you referred in
your answer to Q 45 the some V.r. Benzler referred to hy
you in your annv/cr to XQ 233?
A He was .
XQ 269 Was Hr. Hofbauer, to whom you also referred
in your answer to Q 45 employed by you in the recording
department of Thomas A. Edison, Iricorpo rated, during the
period when you were experimenting on these 200 thread re¬
cords?
A I am not sure that he was.
XQ 270 Would the records of your Company show the period
of employment of Mr. Hofbauer?
A I think they would, and I will have them looked up,
xafcxoraoex
XQ 271 , Do you remember what was the shape or form of
the recording stylus in the Model C machine with which
~yuu hav e~tTret'ifind you made a number of records back -
-118-
'
in the early ninties?
As nearly as I can remember
A ixMKZ n uxxxKXKKkxxx ixat-xt 1 i e recording stylus was
of cylindrical form, the end of which was slightly cupped.
XQ, 272 What, if you remember, was the shape or form of
the reproducing stylus in this machine?
A It was also a cylinder with a spherical or ball shaped
end.
XQ 273 Do you consider the reproduction secured with
your present 200 thread or Amberol record better or worse
than that secured with your IOC thread or (Standard record?
A I consider them about ea.ual.
XQ 274 It would bo entirely feasible, would it not
to use the same diameter of cutting stylus for making
said 100 thread or Standard record, as for making the 200
thread or Amberol record, would it not?
A Axxkes xSflfixthzHKdxMUHX^XKscn As good a record
can be made with the Amberol cutting stylus with 100 feed
as can be made with the same needle with a 200 feed.
Cross .Examination closed.
Re Direct examination by Hr. Dyke,
office
RDQ 275 Have you any ^records which you have found
subsequent to your former testimony by which you can
more accurately fix the time when the Amberol record was
developed?
7 -119-
A Tlie office hap given me data allowing that the record¬
ing department moved to 69 Fourth Avenue, liew York City
March lot, 1904, and as near as I can remember
experiments began within one or two .monfehs after we had
removed to thin laboratory.
RDQ, 276 TOiat season of the year, ae best you can rer.cmbe:'
was it that the work in the development of the Ambcrol re¬
cord was done?
A It was either in the Spring or Fall! of 1904.
RDQ 277 Are you certain that it was some time within
the year 1904 and not as late as the Spring of the
following year?
A I am.
RDQ 270 In determining the normal setting of a recording
stylus for the production of an original engraved record
MhaixrtKfcK by what are you governed; do you measure the
depth to which the needle in cutting or do you otherwise
determine such setting?
A Such Betting is determined by looking with the mi¬
croscope and comparing the width of cut with the width
of wall .
RDQ 279 For how long a time pant has it been your ouston
to determine such normal setting with the aid of a micro¬
scope?
-120-
tnreaa
A Since we Btarted to make masters for our 100/^Standard
records somewhere around 1899 or 1900.
RDQ 280 V/hat was your practice prior to that time?
A As far as I know, and could judge v/ith the ordinary
magnifying glass, the depth was about the came.
RDQ 281 In cutting the groove for the 100 thread record
from 1899 or 1900 on, what i s your present knowledge as
to the depth of the groove so obtained?
A XnxKTixfuia^'nrxtQ As far as I know the depth then was
the same as it is now. In answer to XQ 122 I stated
that the normal depth of the cut was seven eighths of
a thousandth. I toot find that I have this confused
with others that I have made and that the normal depth
of groove is about a half of a thousandth and not
seven eighths, and the depth which the needle can cut
without gouging out adjoining walls is five eighths of
a thousandth, about.
RDQ, 282 From what time does your study of phonograph re¬
cord grooves by means of enlarged drawings, date?
A From the time Mr. Edison made his first drawing,
in connection with the Amberol record.
RDQ, 283 Prior to that time had you been in the custom o:’
measuring or calculating the depth of record grooves*
X in your recording work?
—A - 1 . had not. _ _
-121-
Re direct examination closed.
Re cross examination t>y lir. Oherlin.
RXQ 204 How does a comparison of the width of a cut
with the width of wall enable you to measure the depth
to which a recording stylus or needle is cutting?
xingxiesKtHat
A Sy/maki-iigxaxdraisKtiKxafxJfcljEXXKixHXdiocxanxffotlKriXQXsasjtiE
There is a relation between the width and the depth of
the cut. The wider the groove the deeper the cut.
TiXQ 265 Is thin relation the Bame or different for styluses
of different diameters?
A XHa£ I do not know without laying it out in the
drawing, hut I don't think it is.
RXQ 286 What diameter of stylus di d you have in mind in
your answer to RDQ, 281?
A I had in mind a 40 thousandth stylus.
BXty 287 This diumeter of stylus is used in cutting which
kind of record?
A The two minute or Standard record having 100 threads
to the inch.
RXQ 288 What is the normal depth of groove at which you
ing
set the record^ stylus used in cutting Ttaherol or 200 throtd
rooords?
A The same as SKipa-tbSS for 100 thread records.
RXQ 289 Has your practice in this respect in the manufac¬
ture of Amherol records hcen uniform? _ _ _ ’ _
-122-
Objected to by Hr. Dykn
[t has not.
immaterial,
RXQ, 290 Why are you certain that it v/au either in the
Spring or Fall of 1904 that the work in the development
Amberol recordB wau done?
on
A Because there v;aB foliageAa tree which xn could he
viewod from the laboratory window at which I worked.
as well
RXQ 291 Might it not also have been equally ^in the
Summer of 1904?
A Yes it might.
Re cross examination closed.
Reposition closed.
Signature and certificate waived.
Met pursuant to adjournment. Parties present as
before.
George B. Redf earn , a witness produced on behalf of
complainant, being first duly sworn, answers as follows
in answer to interrogatories, HscxiHiinirax by Mr. Dyke:
Q 1 What is your name, age, residence and occupation?
A George B. Redf earn; 38 years of age; residence 5 Haw¬
thorne Street, Orange, Hew Jersey; occupation, cost account
ant for Thomas A. Edison, Incorporated and Edison
Phonograph Works.
Q 2 Please state how you were employed in the years from
1890 to 1896?
A I was in the inspection department of the Edison
Phonograph Works in 1890 to the Pall of 1891 ; was
cost clerk and held various positions such as receiving ,
clerk, stock clerk until 1894; was cost clerk, chief
billing clerk an d purchasing agent until about 1898.
Practically all this time I was employed by the
Edison Phonograph Works.
Q, 3 Where have you been employed since 1896?
A By Edison Phonograph Works, national Phonograph Com¬
pany, Edison Manufacturing Company, Thomas A. Edison,
Incorporated jointly.
<1 4 Where have you been located during all of this time?
A At Orange, Hew Jersey/
a
b Are you familiar with the record of the EMBijOOC
Edison Phonograph Works and with the products produced
by the Edison Phonograph Works in the period from 1890 to
1896?
A I am.
Q, 6 1 call your attention to a phonograph hearing the
number 21,289 and ask that you state what this machine
is if you know/
A This machine is one which was built and was known
as C phonograph.' It has always been designated
by the letter "C" although sometimes the expressions
"Style C” ."Model C" and "Class C" were used, all however
designating the same C machine.
Q, V By what Compa :y was this machine put out?
A It was made by the Edison T honograph Works for the
Edison United Phonograph Company.
Q 8 At what time or timeB were such machines manufacture}
by the Edison Phonograph V/orks?
which were made earlier:
A Outside of the first few sampleB4 during the period
from 1893 to 1896.
Qi 9 Wore you familiar with these Style C machines at the
time of their production?
A I was.
-79-
q 10 Please examine the machine before you and state
if you can, whether you find any departures in the pres¬
ent machine from those manufactured toy the Edison
Phonograph Works from 1893 to 1896.
A It is thesame machine. The stop toar is broken so
that it will not stay in proper position and a lead
washer has been substituted which fastens the body to the
top, and a knob was broken off the knife bar of the
shaving device. With these exceptions I find no change
qxiixx^ithxjbhHsexEXEEXiinHB in the machine,
q 11 Did the Style C machine as produced by the EdiBon
Phonograph Works during the period named, comprise a
cabinet of any kind?
A It did not.
q la Please also examine the reproducer on this machine
which has the serial nunber appearing thereon Ho. 21,708
(directing witnesses attention to Complainant's Exhibit
Ho. 26 - Edison Style C Sound Box Ho. 21,708) and state
whether you find any departures in this sound box from
the sound boxes which formed a part of the Style C machine
made by the Edison Phonograph Works during Baid period.
A I can find none.
q 13 Have you a personal recollection of the diameter of
the recording and reproducing styluses whiclj were placed
-80-
on the sound boxes of the Style C machine made by the
Edison Phonograph Works during the period from 1893 to 18<
A 1 have not.
q 14 Can you find any answers in the books of the Edison
Phonograph Works which would indicate what the diameter
of such recording or reproducing styluses was during
the period in quest ion?
A On page 291 of a book which is stamped on the back
"Edison Phonograph Works, Details of Phonographs
and Speakers" I find a record of the speaker Ho. 20,7l)8 .
This record reads as follows:
"Ho. of Class Details
Speaker
C
20708 Hook Hay 18th, 93 Shipped to A.E.Kennelly
c/o Edison Laboratory. Hew Speaker
20708 Tested & Inspected by Burnett
Hay 13’ 93. Hew style sensitive
speaker same as used on English
Mach. .025 Rec. Stylus. Memo A.O.
Tate . "
q 15 Where did you find this book?
A In the vaiklt in the basement of the Edis on Phonograph
Works office building.
q 16 What period does the book in question cover?
A Prom October 1891 to July 1893.
Q, 17 In Kay 1893 when the entry above referred to appeaB
to have been made, did you have any connection with the
)6
keeping of tffi's book? - — - -
-81-
- i
A Thi.8 record wan made by a cleric under my supervision.
(J 18 What does the expression "C hook" in the column
"Class" mean?
A The letter C indicates the class by which this
particular speaker was known, the word hookmindicates
the method of fastening or connecting the recorder 'and
reproducer arm to the diaphragm. This connection was
made by a piece of v/ire hooked -at- each end.
Q, 19 What does the expression "English Mach." mean?
A Itmeane the class C machine.
20 And by that you mean, do you not, machines of the
type before you as Eomplainant*s Exhibit Ho. 25?
A I do.
Q 21 XWhat does the expression ".025 Rec. Stylus" mean?
A It is a record showing the size of the recording
stylus used in that class speaker. It indicates that
recording
the diameter of theA stylus is 25 one thousandths of
an inch.
Q 22 Have you been able to locate ary other records of
the diameter of recording or reproducing stylus made
use of on these Style C machines?
A I have not.
(J 23 Have you made a search for that purpose?
A I have .
q 24 Please stat e what this paper which X now ha.n<l you
is, if you can do so.
A It is original order ho. 127 of the Edison United
Phonograph Company to Edison Phonograph Works giving
instructions to ship to Edison Bell Phonograph Corporation
Limited,
London, 650 phonographs commercial type, xxx
250 phonographs domestic type
100 phonographs automatic type
10000 dictation cylinders
4000 postal cylinders
1000 postal cases
This order is dated January b, 1093 and is signed by
G. IT. Morison, Secretary.
Cj 25 Where did you obtain this paper?
A This v/as on file in the vault of the Edison Phono¬
graph Works on the second floor of this office.
The paper identified by the witness is intro¬
duced in evidence with the designation:
Complainant's Exhibit ITo. 27 Edison United
Phonograph Company order of 1893 .
d 26 What does the expression "650 phonographs commercial
type" in thin order designate?
A It designates 650 machines known by us as Claso C.
In other words 650 machines of the same type as
Complainant's Exhibit Ho. 25 equipped v/ith the speaker
like Complainant's Exhibit Ho. 26.
q 27 What does the expression "250 phonographs domestic
type" designate?
-83-
A In designates 250 phonographs of a class then
knov/n hy us as Class H. This differed from the Style
C machine in that it 'was made for reproducing only, havijg
a special reproducer and arm made for that purpose. It
had no shaving devide and could not he used hh in connectfa
with postal or mailing cylinders. I have here a phonograph
aim of the type referred to having therein a special repp
ducer of the kind referred to, which is marked v/ith the
number 20,163. This combination as it stands was known an
"Music Reproducer and Arm."
The aim and reproducer produced by the
witness are introduced in evidence with
the designation:
Complainant’s Exhibit Ho. 28 - Edison
afcyixxHir music reproducer and arm for
Style H machine. Ho. 20,163
Q, 28 Hoy/ many threads per inch v/e re the Commercial type
or Style C machine, and the Domestic type or Style H ma¬
chine arranged to feed?
A Two hundred.
Q, 29 What were the "Automatic type" phonographs in¬
cluded in this order?
A These were machines of the Class S type which had
a feed of 100 threads per inch equipped with an automatic
coin slot device.
Q'30 Was this order filled?
A It was.
-84-
Q 31 Vfhat was the practice of the JSdiBon Phonograph V/orte
during the period from 1893 to 1896 in respect of
keeping a record of the serial numbers of phonographs?
A The Edison Phonograph Works in their shipping depart¬
ment kept a record in hooks known as Shipping Record
of Phonographs which hooks contained the numbers of phono¬
graphs and in which were made a record giving the date
and the party to whom shipment was made .
Q, 32 Wh&t was the practice, at the time in question,
in the giving of serial numbers to phonographs themBelve^i
A The bodies of the different kinds of phonographs were
stamped v/ith a number which when the phonograph was
assembled, becam e th e phonograph number by which it was
thereafter known. These numbers were in sericB and in
each series the numbers were consecutive.
Q 33 Have you the record of shipment of the machines
covered by the order which you have produced and which
is in evidence as Complainant's Exhibit Ho. 27?
A I have.
Q 34 Are you personally familiar with this record?
A I am, and have had frequent occasion to refer to it.
Q, 35 Please examine thi s record of shipment and state
in a general way what isb shows with respect to the Style
C and Style H machines which were put out by the Edison
-phonograpit— Wo-rk&i - — — - — -
A Thin record indicates that the serial number of the
Style C and H phonographs were from 2Qx:fchDHSKjix20001
upwardB, those machines which were shipped on order
f2-7
-a»)(lS5frx'beins from 20113 to 21084. Between theBe numbers
there are some missing, probably due to defective castings
which did not pass inspection. Beginning in January 189E
and extending to about the end of March 1895 there is a
record of 500 machines Style C with numbers ranging from
21085 to 21584 both inclusive, acndxinxKsyx which were
shipped to S. F. Horiarty who was connected with the
Edison United Phonograph Company, and in May 1896 there
Style C ranging from
is a record of about 100 machine sA with numbers* 21585
to 21690 with some om.vissions. These machines were
shipped to Wambersie & Sons, Rotterdam, on orders of
the Edison United Phonograph Company. The dates of
on order 2± 127
shipment of the first lot mentioned* range from May 1893
to August 1893.
Q 36 Vflmt is the highest serial number applied to either
Style C or Style H maohine which you find in this record?
A 21690.
Q 37 And on what date does it appear that this machine
was shipped?
A May 28, 1896.
Q, 38 Do you know whether since that date any Style C or
A There is a record of a C phpno body Ho. 21683
shipped on Kay 11, 1897 to Edison United Phono Company,
London, England. This is the latest date of shipment I
find in this record.
Q, 39 Please state, if you know, when the manufacture
and sale of Style 0 and Style H machines was discontinued.
A I have no recollection of any order subsequent to
that for machines which were shipped to Wambersie & Sons.
(J 40 Please state the lowest and highest serial numbers
which were applied to these Style C and Style H machines
by the Edison Phonograph Works.
A The lowest number was 20001, the highest 21&90 .
Q, 41 And between theseA numbers , can you state approximati
tely how many of the numbers are skipped in the record?
A About 165.
Q 42 Can you tell approximately how many Style C and
Style H machines were made and shipped by the Edison
Pftphograph Works as appears from this record?
A About 1275 Style C and 250 Style H.
Recess for luncheon.
Q 43 What is the title of the book to which you have
referred and which contains the records which you have
just referred to.
A This book has the title "Shipping Record of
Phonographs 20,001— to 25,000-“-; — - -
q 44 ’-’mere did you obtain this 'book?
A In the basement of the office building.
Q 45 Where did this Style C phonograph No. 21,289 in
evidence ae Complainant's Exhibit No. 25, come from?
X I have reference to the machine itself and my
question does not include the speaker Ho. 21,708,
Complainant's Exhibit Ho. 26 which is now on this machine.
A It was found in the repair department of the Edison
Phonograph Works.
q 46 Were you present at the time?
A I was .
Q 47 How does the condition of the machine at present
compare with its condition when so found?
A It is somev/hat cleaner.
q 48 Please consult the shipping record to which you
have referred, and state what, if any, entries you find
therein with respect to thin Style C phonograph Ho. 21,285 ,
Complainant's Exhibit Ho. 25.
A I find an entry that it was shipped February 15th,
1895 to S. F. Koriarty, London, England.
q 49 Do you know how this machine came to be in the repa:.r
department of the Edison Phonograph Works?
A I do not.
Q, 50 From what oource did the music reproducer Ho. XifiX&c
20,183 and arm in evidence as Complain't ' b Exhibit No. 28
come?
A X have had it in my possession for a number of
years, perheps ten.
q si Please explain somewhat more fully than you have alr(
what the Style H phonograph, of which you have testi¬
fied that 250 were made, was like.
A These Style H phonographs were like the Style
C phonograph before me, Complainant's Exhibit No. 26,
with the exception of the following particulars.
The Style C machine was equipped for recording and reprodui
ing, the speaker having a recorder stylus and a
reproducer hall set in a single arm. The Style H machine
was equipped for reproducing only , the reproducer
having only a reproducer hall jihxxk and no recorder
stylus. The reproducer of the style H machine had
also a heavy lead weight, the speaker of the Style C
phonograph having a light counterbalance weight made
in two parts . The Style C phonograph had a shaving
device which the Style H phonograph had not. The speaker
of the Style C phonograph was adjusted for tracking by a
cam while the reproducer of the Style H machine was ad¬
justed for tracking hy means of a screw. The arm of
the Style H machine was so equipped as to he adjustable
only for the height of the record, while the arm of the
Style C machine was adjustable so' that it could he used
i.dy
-81=
L _ ...
with the standard Bize blank or record and a smaller one
which viao used for mailing. As the Style H machine was
fitted for only the standard size record, the scale for
adjusting the governor had no mark indicating the proper
position of the speed adjusting lever for the small
cylinder and shaving. Should you substitute a music
Exhibit Mo.,
reproducer and arm Exhibit 28 for reproduce^ 26 and its
aim and shaving device and replace the speed indicating
scale with another , -it- would not show the"small" and
"shaving" marks, you ”-ould have practically the same
machine as the Style H.
52 Please state yxx what you mean by "practically "
the same.
A There might be a small difference in design of the
back rod sleeve from that which was used on Class H,
but this would make no difference in the practical workirg
of the machine.
Q 53 Have you any record with respect to the musical
reproducer Ho. 20163 which fonns a part of Exhibit Ho. 26!?
A I have none, but X have a record of musical repro¬
ducers Ho. 20162 and 20165. On page 372 of the detail
book previously referred to I find that music; reproducer
No . 20162 and arm was a part of Style H phonograph No'.
20501 which was shipped on June 17th, 1893 to S. F,
Moraarty, London , England, and on page 378 of the same
book I find that music reproducer Ho. 20165 ancl arm was
a part of Style H phonograph Ho. 20510 which was shipped
on June 24th, 1893 to S. F. Moriarty. As these phono¬
graphs were tested on June 15th, and June 17th, 1893 respf 0t
ively, this would indicate that these reproducers were
made at about that date, and as No. 20163 was in the
same series it would also indicate that it was made at
about that time.
Q, 54 Have you ha any record with respect to the speaker
Ho. 21,708 in evidence as Complainant's Exhibit Ho. 26?
A I have none. The highest number of speaker of which
I have record is No. 21145, we having discontinued the
use or keeping of the detail book about September 13, 1891 .
As this number is considerably higher than that of which
we have record, this would indicate that this speaker
was made at a subsequent time probably in connection with
the second order for Style C phonographs which we re made
in 1895, As this reproducer was made only for use on
Style C machines.
The Examiner is requested to mark
the books referred to by witness for
identification and it 1b stipulated
that these books shall be open for
inspection on behalf of Eumplxinxxi
kaixthHixSaxxtkE defendant at any rea¬
sonable tim e, but that for the present
_ _ at^east^said b'-.oks which are frequently
-91-
remain in the custody of complainant.
Direct examination closed.
Cross examination hy Mr. Oberlin.
Is
QX 55 KJQ5 the Edison Phonograph Works, with which you
testified you were at one time connected, the name of
a Company or simply of a plant?
A It is the name of a Company.
XQ 5G Is said company still in existence and doing
■business?
A It is.
XQ, 57 V/hat is its present business?
A The manufacture of phonographs, record blanks, kine-
toncopes, numbering machines , etc.
XQ 58 V/hat is the relation of said Edison Phonograph Works
to Thomas A. Edison, Incorporated, the complainant herein.
A All thei r product practically, is manufactured for
Thomas A. Edison, Incorporated.
XQ 59 Thomas A. Edison, Incorporated, then, do not man¬
ufacture, themselves, the phonographs and supplies which
they sell. Is this correct?
A They do not manufacture phonographs, themselves,,
some of the supplies they purchase from parties other than
Edison Phonograph Works and they manufacture the musical
records themselves.
XQ 60 What waB the Edison United Phonograph Company
original order Ho. 127 of which you identified in your
an swer to Q 24?
A It was a Company which then had the rights for the
Edison
sale of A phonographs in countries other than the United
States of America and the Dominion of Canada.
XQ 61 Do you know whether this last named Company is stil
in existence?
A I do not know.
XQ 62 ’.Vhat was the Edison Bell Phonograph Corporation
Limited, to which the goods on said order Ho. 127 were
to he shipped?
A It was a Company which had the exclusive rights
under the Edison United Phonograph Company, for the ex¬
ploitation of the Edison Phonograph in Great Britain
and Ireland.
XQ 63 Is this last named Company still in existence, do
you know?
A There is an English Company of a somewhat similar name
hut I am not aware of its relation to the Company referred
to.
XQ, 64 Does the Edison Phonograph WorkB at present manu¬
facture phonographs for either the Edison United Phonograjh
Co. or thiB English Company which you state has a name
somewhat similar to Edison BejLj. pnonograplr'Corporati'orr; -
-93-
Limited.
A I do not know.
XQ 6b Have either the Edison United Phonograph Co. or
the Edinon Bell Phonograph Corporation Limited , ever
engaged in the manufacture of Edison phonographs, -»o your
knowledge'?
A I have no knowledge of the Edison a* Bell Co. The
Edison United Phonograph Company did not manufacture.
XQ 66 Yhat wan the "inspection department" of the
Edison Phonograph forks in which you state you were in
1890 to the Pall of 1891?
A It was a department in which the various parts made
by the Edison Phonograph Works were inspected as to their
correctness.
XQ 67 You have on direct exon inat ion testified that
S. P. Moriarty to whom a number of shipments of Style C
machines were made, was connected with the Edison United
Phonograph tCo. What was the nature of his connection
with such Company?
A I do not know.
XQ, 68 Where did said Comp any have its headquarters?
A In Hew York City.
XQ 69 To what point, however, were these shipments to
S. P. Moriarty, directed?
— A To London, England.
-94-
XQ 70 And do I understand that while they were thus
consigned to S. F. Eoriarty, London, England, these machine
were ultimately intended for the Edison Bell Phonograph
Corporation, Limited?
A That is correct.
XQ, 71 Referring now to the "shipping reoord of phono-
2-t>oo r x sitoo
graphs M- SQ to .Ofl-54' which you have heretofore used in
testifying and which have Been marked for identification
By the Examiner, I note a paster applied to the outside
of the front cover of this record with writing thereon.
Will you please read such writing in the record?
A It reads "Chipping record of M. & S.M. Phonos."
XQ 72 Can you explain the presence o:' this paster on the
record in question?
A This paster was placed on this Book for the purpose
of differentiating it from other shipping records giving
the same serial numbers . In later years as we developed
different kinds of phonographs, we started numbering
these new phonogra jhs at Ho. 1, and it was only a
question of time when these new phonographs would Be
numbered serially as high as the older kinds.
XQ 73 Referring further to this shipping record, and
the system of numbering employed at the time that said
record was Being made, please state whether different
-95-
were devoted to different kinds of machines.
A At that time, 1893, we had two series of numbers , the
machines under 2 -r02O were the regular machines of that
date which were used in the United States and Canada and
to a limited extend abroad, and ^a- series over r©80- f or
the Style C and H machines which were made for the Edison
United Phonograph Company with the exception of a few
which were shipped to the Worth American Phonograph Compan;
in the United States.
XQ 74 Then Ho. 20001, which is the first number
appearing in the book under consideration you are positive
was the first number applied to machines of this C style
are you?
A 1 am .
XQ 75 And similarly I understand that Ho. 21690, which
also appears in this book, was the last number applied
to a machine o f this fctyle. Is this correct?
A That is correct.
XQ, 76 Is this number 21690 the last number in said book
in connection with which you find an entry?
A It is not. There were entries beginning with Ho. 2300]
to and including 25000 givin e a record of various K & S.tt.
Phonos, and Indies therefor, with a few slot machines and
shaving mac hine 3 .
'
Xq, 77 v/e re ary of these machines, shipments of -which
are found recorded from No. 23001 on, shipped abroad?
or were they in the urns main shipped to points in the
United States?
A The majority were shipped to po ints in the United
States. Quite a quantity were shipped abroad.
XQ 78 What is the date of the last shipment you find
via 8 made to a point abroad, that is outBide of the United
States , of machines numbered 23001 or upwards?
A The last record I find Giving a foreign deBtinati on
is May 16, 1896 which included machine No. 23315.
XQ 79 Do you know whether your records, and X am not
limiting my inquiry to the particular books which are
before us, would show any foreign shipments of machines
made subsequently to the date which you have just read?
A They will so show.
XQ 80 Well then, were there any such shipments made to Ej
land subsequent to the date in question, viz. May 16, 189j
A They were.
XQ 81 , Were such shipments made more or less continuously
and immediately following this date?
A They were.
XQ 82 What kind of machines were thus shipped, I am re¬
ferring more particularly to England.
i£5-
i?
-97-
A All kinds of phonographs which were manufactured.
regularly.
XQ 83 What kind <&f machines, if you can state, did you
manufacture regularly immediately following this date
of 1'ay 16, 1896?
A In 1896 we manufactured M phonographs S . phono¬
graphs, and in the latter part of the year or subsequent
thereto, the Home phonograph.
XQ 84 But you discontinued the: C style at or about the
date of the last shipment thereof concerning which
you have previously testified, di d you?
A As a matter of fact we never manufactured either the
C or H phonographs without having previously received
an order therefor, so that when we filled the last
order we manufactured no more.
Xq 85 Do you know whether the sale and use of these machii
in England was discontinued simultaneously with your dis¬
continuance of their manufacture and shipment?
A I do not know.
XQ 86 What was the M. phonograph and the S.M. phonograph
which you state you were manufacturing in 1896. I wish
only a brief description of these machines.
A The K. phonograph wub a 100 thread machine equipped
for both recording and reproducing and was operated by
a hatterv current. It was oracticallv the same
ies
-98-
as what is now known as the Balmoral. The S.IJ. machine
was a 100 thread machine equipped for recording and re¬
producing and was opcrnted by a spring motor and wao the
first type of the machine which is now kn07«i as the
Triumph.
Home
XQ, 87 'Vila t wan the J4 phonograph which you have otuted
you began to manufacture in the latter part of 1896?
A Thin was a 100 thread machine equipped for recording
and reproducing and was operated by a spring motor, the
whole construct ion being lighter than that of the
Triumph.
XQ, 88 I understand that both the C and the H styles of
machines had the same feed that in, were adapted for
operating on machines having 200 threads or thereabouts
to the inch. 1b thin correct?
A That i s correct.
XQ 89 For what use was the C machine primarily intended?
A It was primarily intended for use as a commercial
phonograph .
XQ, 90 What do you mean by "commercial" in your preceding
answer?
A It was designed for use in business offices for dic¬
tating letters and memorandum thereto which were in turn
transcribed..
-99-
commercial machines?
A The M. phonograph was . The S.M. phonograph could he
used fo r commercial purposes, hut I believe the Home
KBuiaxnKd machine was primarily designed for amusement
purposes .
XQ 92 How di d your sales of these three last named
phonographs compare?
A I don't know.
XQ, 93 How have the sales of commercial phonographs in
general compared with the sales of the other type of
phonograph?
A The sale of machines for amusement purposes have thus
far far exceeded sales of those designed for business
use.
XQ 94 .Do you know what were the original expectations of
your Company as to the prospects of sales for the commerc:.al
type of machines as compared with such other types?
A I do not know.
XQ 95 V/hat was the character of the machine Ho. 22750
the shipment of which is found recorded in the shipping •
record hereinbefore referred' to by you?
A The type M. machine.
-100-
XQ 96 How does the record of its shipment happen to to
recorded where it is in this hook, viz. without any of th !
numbers for some pages on either side of it being filled
in?
A I don ' t know.
XQ 97 Who was A. E. Kennelly?
A He was electrical, expert employed at the laboratory
of Hr. Thomas A. Edison.
XQ 98 Wlie re is he now?
A The last I knew of him he was a member of the
firm of Houston <5; Kenne^ly of Philadelphia.
XQ 99 Did you know G. tf. Mori son, who signed himself as
Secretary to the order of the Edison United Phonograph Co.
here in evidence as Complainant's Exhibit Ho. 27?
A I dibd but do not know where he now is.
XQ 100 Who was A 0. Tate whose name appeared in connection
with the on page 291 of the book heretofore
referred to by you bearing on the back "Edison Phonograph
Works, details of Phonographs and Speakers"?
A As to his position at this time 1 am not certain.
He was at one time private secretary to Mr. EdiBon.
XQ 101 What is the significance of the inclusion of his
name in the entry in the question.
A His memorandum was the authority for making delivery
oi the speaxer in question to Ur. Kennciiy. -
-101-
XQ 102 You have heretofore stated that this particular
ree-o-rd^was made by a clerk under your supervision. Bho
was this cleric?
A Miss llettie B. Crane.
XQ 103 I find as a part of this entry or' record the
notation ".025 Rec. Stylus" which you have stated indicatp
the diameter of the stylus on the machine or recorder
forming a part of the machine, to which this entry relate^
Was it customary to note in connection with the entries
made in this hoolc the diameter of stylus in the case of
" speakers"?
A It was customary to note in this hook any informatioi
which waB thought might he useful for reference, and if
this would
there are no previous records ±a indicate that these were|
being made in the usual manner or that no record was
necessary.
XQ 104 Was this diameter, viz. mu* x&25 thousandths of
an inch the diameter of all of the styluses used on
r
these Style C machines? or just of this particular one?
viz. the one to which the entry under consideration re¬
lates .
A To the hcBt of my knowledge this entry would indicate|
that this was the diameter of the stylus used t
C speaker, although I am informed that a slight variation]
in diameter was allowed at that time.
-102-
XQ 105 What other term is used to designate:. the
"speaker" as found in this hook and as occasionally
heretofore used hy you in the course of your deposition?
word
A TheA speaker was generally used to designate an
instrument equipped for recording and reproducing.
XQ 106 Then does the designation of the diameter of
the stylus^ about which we have been talking, refer to
nintiusx the recordingor reproducing Btylus of this machine
or to both?
A With us the term "stylus" has alv/ays been used to
designate a recording stylus, .the reproducing sapphire
being known as the reproducer ball or button as it was
shaped .
XQ 1G7 The entry in this book, then, conveys no informat: d
as to the diameter of the reproducer stylus, does it?
A It does not,
XQ 108 Are any other records kept by your Company
in addition to those illustrated in this xjuskjcmx book
marked "Betails of Phonographs and Speakers" which would
show more fully the construction of this Model C machine
and of the speaker or recording and reproducing instrument
forming a part thereof.
A There were such records but I am unable to locate then.
XQ 109 What waB the character of these other records?
103-
A There were some drawings and probably instructions to
the factory as to the design and construction.
X(J 1X0 You state, however , that you have heen unable
to locate any such recoi’ds as these just described by you.
A I do.
XQ 111 Is your Company at present putting on the market
a commercial machine , using the term commercial in the
sense hereinbefore defined by you?
A It is.
XQ 112 Do you know the rate of feed, or in other
words the number of threads per inch in the completed
the
record incase of this machine?
A 150 threads per inch.
XQ 113 Does the Exhibit Style C machine here in evidence
as Complainant's Exhibit Ho. 25 with the speaker mounted
thereon which is also in evidence as Complainant's Exhibit
Ho. 2G appear to you to be in condition for satisfactory
operation?
A It does not.
XQ, 114 In what particular i3 it not?
A The stop bar is broken, the button is broken off
the end of the shaving knife jsmsi, the machine is Bhort
circuited in some manner.
KQ 115 Do the items to which you have just refferred, how
never, iTil'erfere , so far as yuu can observe— with the pos-ui -
-104-
ducing needles of the same diameter as this style C machin
A They did.
XQ 118 lla% you found any records wherewith you can
identify the sound box or speaker HrtxXkKxmx here in
evidence as Complainant's Exhibit Ho. 26 which is at
present mounted on the Style C machine in evidence' as
Complainant's Exhibit Ho. 2b? '
A I have not.
Xft 119 Have you no record then of a sound box bearing
the number which appears on this sound box, viz. Ho. 217065
A I do not know of any.
XQ 120 Are you sufficiently clear in-your recollection of
the details of construction of the sound boxes or speakers
which were used on these Style C. machines to state
positively that this Exhibit sound box is identical with
those thus used?
-105-
A I am. As before stated I have no personal recollec¬
tion as to the diameter of the recorder stylus and
reproducer ball. The general appearanoe of this
speaker is the same as that of the speaker used on the
Style C phonograph.
XQ 121 Hare you any records which would show the numbers
of the particular speakers that were fitted to the dif¬
ferent style C machines, the record of whioh you have
produced and concerning whioh you have testified?
A Our reoords indicate the number of the speakers whioh
were assembled to various maohines from October 1891
to September 1893.
XQ 133 Have you any record of the number of the speaker
or sound box if any, that was fitted to the particular
style C machine here in evidence as Complainant's Exhibit
Ho. 35 when the same was originally shipped?
A I know of none.
XQ 133 Do your reoords show whether any sound box was
fitted for this machine when it was shipped?
A They do not, but as they were ordered oomplete,
exoept cabinets, this particular machine was probably
equipped with a 0 speaker.
Adjourned to Saturday, January 37, 1913 at 10:15 A.M.
I
Met pursuant to adjournment.
Parties present same as before .
XQ 124 This" shipping record of phonographs. *20001 to
25000" gives serial numbers of phonographs only, does it?
speakers or
That is of the phonograph swithout the, reproducers , al¬
though you have indicated the machine usually included
the latter also.
A It dOGB.
XQ 125 Did you keep no similar shipping record of the
speakers or reproducers that went with these machines?
A 1 know of no similar record.
XQ 126 The only record, then, that you have of speakers
or reproducers is that found in the so called "Detail
hook" from which you have selected the reoord or entry
relating to a ccrt'.in speaker Ho. 20708. Is this correct?
A That in correct.
XQ 127 Did these Model C machines as they woro shipped
by you carry, as a part of their equipment, a hearing tube
such as I find in connection with the Exhibit machine
Complainant's Exhibit Mo. 2b before us?
A They did.
XQ 128 Was the design and construction of the hearing tubes
just referred to, the same as the specimen attached to
this machine?
A It waB substantially the same. There may have been a
difference in the spring which is inside the foriced portion
of the hearing tube whereas those supplied may have had
an outside spring.
7Q, 129 please describe the construction and design of
speaking tube which waB used in connection with these
Style C machines, such as the exhibit machine before us.
A Y/e furnished with these machines a speaking tube made
tapered
up of a paper flexible mohair co vered tube on the large
end of which wan a rubber or imitation rubber,- mouth piece
and on the small end a nickel plated ferrule .
XQ 130 Can the"music reproducer" Ho. 20163, which with
the '
x±x arm therefor has been introduced in evidence as Com¬
plainant's Exhibit Ho. 28 be fitted on to the., Exhibit Style
C machine before us. Complainant's Exhibit Ho. 25?
A It can.
XQ 131 How would thi s be done?
A’ It would be necessary to remove the swinging arm of
the maohine, take out the back rod, loosen up the clamp
shaving
screw in the jen if e block whereupon the arm which now
music reproducer and
containd the speaker could be removed. Thi^ arm could
the n be placed on the back rod sleeve and clamped thereto
and the back rod and swinging arm replaced in their origi¬
nal position.
XQ 132 How did these machines come to bo called Style
-C mnrhinp.n.. If yon know? _ _ _ _ _
-108-
A Presumably from the first letter of the word "Commercial1'
XQ 133 V/hy was the Model or Style H machine so called
if you know?
A This represented the first letter of the word
"Household", by which name these machines were known here.
XQ, 134 What does the number vis. Ho. 21706 of the
sound box or speaker in evidence as Complainant's Exhibit
No. 26, indicate to you as to the continuance of manu¬
facture of speakers of this type subsequently to the
date of speaker Ho. 21145 which was the highest number
of which you state you had a record?
A This would indicate that we had made 563 speakers of
this type subsequent to such date, or at least that number.
XQ, 135 What; .was the shape of the recording stylus as you
remember it, in the case of the Style C madaine?
A Round, with a cupped end.
XQ 136 By round do you menn cylindrical or spherical?
A Cylindrical.
XQ 137 "'hat was the shape of the reproducing stylus as
you remember it?
A Cylindrical, with a ball shaped end.
XQ 138 Was the shank of such reproducing stylus of the
diameter
same xxxx as ttoamtawtoww the ball shaped end?
Q I don't know.
-109-
139 Do you employ ear tubeB on your present type oi'
cmmercial machine?
A We do.
XJ 140 Referring to the other records than those which
you have produced for the purpose of your examinations
here, Buch other records consisting, as you have stated
in answer to XQ 110, of drawings and probably instructions
to the factory as to the design and construction of this
hodel G machine and of the spealcer or recording and re-
jroducing instrument forming a part thereof, did you have
charge of these other records?
A I did not.
y Q, 141 Do you know who did?
/ Do.
142 Is it the oust on of the Edison Phonograph Works
o preserve records of this character?
J. It iB.
Cross examination closed.
Re-di'rect examination by Mr. Dyke.
rdq, 143 Are all the commercial phonographs now manufacture).
>y the Edison Phonograph Works, arranged to feed lbO threads
;o the inch as was apparently stated by* yojt in an aver to XQ,
,12?
a The regular machines are equipped to feed 150 threads
— >er inch. -
■110-
We , ho’^ever, make a few machines principally for school
use and to add to plants already equipped with what we
usually call the five minute machine, machines equipped
to feed 100 threads per inch; probably 7i3 to 100 machines
a year are so equipped.
HBQ 144 Have you known of any instances" in which shop
records of the Edison Phonograph V/orkd including working
drawings and instructions to the factory have "been des¬
troyed 7
the
A I understand that a short while ago ±x management
gave instructions to destroy letter files which' were more
than ten years old. Some of these letter files wbie
undoubtedly contained instructions to the shop.
Re-direct examination closed.
Re-cross Examination by Mr". Oberlin.
RXQ, 145 How recently were these orders of the management
for the destruction of files more than ten years old
given?
A I have no knowledge.
RXQ, 146 Was it one year or five years ago?
A Within one year.
Deposition closed.
Signature and certificate waived.
-,111-
Legal Department Records
Phonograph - Case Files
Edison Phonograph Works v. Edison United Phonograph Company
Edison United Phonograph Company v. Edison Phonograph Works
This folder contains material pertaining to the suit and countersuit
brought by the Edison Phonograph Works and the Edison United Phonograph
Co. in the New Jersey Court of Chancery. The cases were initiated in 1 901 and
involved the solvency and holdings of the Edison United Phonograph Co. and
the contractual relations between the two companies. The selected items
include the bill of complaint by the Edison Phonograph Works; a 1 2-page draft
in Edison's hand and other correspondence regarding the suit; and the bill of
complaint and defendant's affidavit in the countersuit.
IN CHANCERY OP NEW JERSEY,
IN CHANCERY OP NEW JERSEY
BETWEEN,
EDISON PHONOGRAPH
WORKS,
§
Complt.
g
AND
B
3
EDISON UNITED PHON¬
P
OGRAPH COMPANY,
Deft.
BILL AND AFFIDAVITS
Howard W. Hayes,
Sol’r of Complt,
HOWARD W. HAYES,
COUNSELLOR AT LAW,
|
;i To the Honorable V/illiam J.Magie,
II
Chancellor.- of the State of New Jersey.
Humbly oomplainihg shows unto your Honor, your
i orator. The Edison Phonograph Works, a corporation duly or¬
ganised ander the laws of the State of New Jersey, and having
jits principal office at Orange in said State, a creditor of
ithe Edison United Phonograph Company, who brings this suit
jfor and on behalf of itself and all other creditors and stock¬
holders of said corporation, who shall come in and contri- j
bute to the expenses of this suit, that on or about the twen-j
jty sixth day of February, eighteen hundred and ninety, the
Edison united Phonograph Co mpany was duly organized as a
(Corporation under the laws of the State of New Jersey, with an
authorized capital stock of One Million Dollars, divided into
,en thousand shares of the par value of one hundred dollars
each, and having its principal office at Orange, in the County
of Essex; that the purpose of this organization as stated in
its certificate of incorporation was exploiting the intro¬
duction and use of phonographs, graphophones and speaking
machines; that all the authorized capital stock of the said
corporation has been issued as fully paid up shares; that
in pursuance of the purpose of this organization the said
Edison United Phonograph Company on or about the eleventh
day of March, Nineteen hundred, purchased from Thomas A. Edison
certain letters patent theretofore granted to said Thomas
A.Edison, in various f oreigh countries, for improvements
on the phonographs invented by said Thomas A.Edison; and al¬
so at or about the same time purchased from the International
Graphophone Company, certain foreign patents granted
1.
to Chichester A. Beil and Charles S.Tainter, in various foreign
countries for inventions of them or one of them for improve¬
ments on the Graphophone.
Your orator further shows that the said Edison Uni¬
ted Phonograph Company then proceeded to exploit the Phono¬
graph and the • Graphophone in various foreign countries, and
to sell territorial rights under the said patents, and to
organize corporations for introducing the invention described
in the said patents; that on account of «&« poor business
management the said Edison United Phonograph Company was un¬
successful in its business enterprises and continued to lose
money and has always lost money from the time of its incorpor¬
ation down to the present time; that on or about the fifth
day of March, Nineteen hundred, the said Edison United Phono¬
graph Company, being largely in debt and without the necessary
funds to carry on itB business in order to secure the debts
already owed by it, and to raise money for the further prose¬
cution of its business, executed a mortgage to the Guaranty
Trust Company, of the City of New York, for the sum bf Three
hundred and Fifty Thousand Dollars covering all the assets of
every character, and at the time of the execution of the said
mortgage the said Ed&sonUnited Phonograph Company, signed and
delivered promissory notes to the amoutn of three hundred
thousand dollars, and that the said mortgage was given to se¬
cure the payment of said notes, and that the said notes all bs
came payable on the fifth day of March, Nineteen hundred and
One .
And your orator further shows that the following is
a statement of the general purport of the said mortgage.
The said mortgage recites that the Edison United
Phonograph Company, owes each of ten persons, thirty thousand
dollars, aggregating Three hundred Thousand Dollars for which
it has given its notes at twelev months with interest at six
per cent per annum; (that the loan made on the. said mortgage is
2.
to discharge the Company's indebtedness including its indebt¬
edness to Stephen F. Mori arty, that the said Stephen F.Moriartj
aggres to loan the company out of the amount paid him Fifty
thousand Dollars on the Company's note, ppybble in twelve .
months at six per cent; that for the better securing the
payment of the Three hundred Thousand Dollars and the Fifty
Thousand Dollars, thl Company has deposited seventeen hundrec
and twenty nine six per cent preference shares of the par
value of ten pounds each and fifteen hundred and forty seven
ordinary shares of the par value of one pound each, and
five per cenf-first mortgage debenture stack of the par value
of twenty seven thousand, two hundred and sixty pounds, all
being securities of the Edison Bell Consolidated Phonograph
Company, Limited of London, England; also all the Company's
interest in the Deutsche Edison Phonographen Gesellschaf t.
Limited of Cologne, Germany, incorporated on or about Octobei
thirtieth eighteen hundred and ninety five, also all the Com¬
pany's rights in the Campagnie Franoaise duPhonographe Edisor
and in its shares and all the rights of the Company in a oon-
tract dated August ninth, eighteen hundred and eighty nine,
between it and Bauer & Co., for the organization of a corpora¬
tion in Austria and Hungary, and all the' Company's rights in
the prooeeds of sale of certain phonographs stored in New York
and all the Company's rights in letters patent for phonographs
graphophones, etc, owned bp: it in Norway, Sweden, Denmark,
Portgual, Belgium and any other Country, and all the Company's
rights in contracts theretofore or thereafter to be made with
the said above mentioned companies and all the other assets
of the Company then owned or thereafter to be acquired, to¬
gether with its net income.
To secure first, a note of Fifty thousand Dollars tc
Stephen F.Moriarty, and after the payment of it to Becure i
equally the said ten notes aggregating three hundred thousari i
dollars.
TS
1 . And your orator further shows that on or about the
seventh day of March, Nineteen hundred and One, the National
IBank of North Amerioa, in New York, a corporation of the State
of New York, being then the owner of one of the said notes
of Thirty thousand Dollars, given by the Edison United Phono¬
graph Company, and Becured by the said Mortgage, which said
note beoame due and payable on the fifth day of March, Nine¬
teen hundred and One began a suit in the Supreme Court of
the State of New York in and for the County of New York,
against the said Edison United Phonograph Company, for the sun
)f Thirty thousand Dollars which Bald suit was commenced by
attachment on the ground that the Edison United Phonograph
Company, was a corporation of thiB State, and not a resident
of the State of New York, that the said writ of attachment
was levied upon the Guaranty Trust Company of New York; that
such proceedings were thereupon had in said suit, that upon
the twenty ninth day of March, Nineteen hundred and One a
Judgment fot the sum of Thirty One thousand and Three hundred
and Sixty-nine Dollars was entered in said Court in favor of
the said National Bank of North Amerioa and against. the> said
Edison United Phonograph Company, which said Judgment remains
wholly unsatisfied.
And your orator further shows that the said mortgage
given by the said Edison United Phonograph Company, to the
said Guaranty Trust Company, covers all the assets of the said
Edison United Phonograph Company, and that the asset's of the
said Edison United Phonograph Company are of much less value
than the amount which the said mortgage is given to sechre, ai
and that the interest of the said Edison United Phonograph
till0
Company in said English, German and Prenoh Companies is of
Little or no value, and that the shares of the said companies
owned by the Edison United Phonograph Company are of little
or no value, and that the right of -the said EdiBon United
Phonograph Company in the said contraot with Bauer & Co. is a'
no value; that the said company' s rights in the said Phono¬
graphs olaimed to be stored in Ifew York, is of little or no
value, and that its rights in letters patent in the other
jountrieB set forth in said mortgage is of little or no value.
And your orator further shows that the said Edison
United Phonograph Company now is and for a .long time past
las been indebted to your orator in the sum of Three thousand
One hundred and Fifteen Dollars and Forty-three oentB for
goods, wares and merchandise sold and delivered by your orator
,to the said Edison Unitde Phonograph Company, and your orator
has annexed to this bill and makes it part thereof a state¬
ment of the items of the said account so due to your orator
from the said Edison United Phonograph Company.
And your orator further shows that on or about the
fifteenth day of March, Nineteen hundred and One, your orator
commenced suit in the -Circuit Court of. the County of Essex
against the said Edison United Phonograph Company for the
said amount so due your orator as aforesaid; that according
to the statement filed pursuantto law by the said Edison Unit¬
ed Phonograph. Company, in the office of the Secretary of State
of this State for the year Nineteen hundredths ^principal of¬
fice of the said Edison United Phonograph Company was located
.t 252 Main Street, in the City of Orange in this State; that
the Sheriff of the County of Essex was unable to find any of¬
fice of the Baid corporation at said place or any agent there
upon whom process might be served; that after the commencement
of the said suit the said corporation as your orator is in¬
formed, have established an office at Jersey City in the said
State, and an appearance in the said suit has been entered
by Messrs Carx-iok & Wortendyke, counsellors at law of thlB
State.
And your orator further shows that said Edison
United Phonograph Company is insolvent and h as not suffi-
oient funds to pay. its just debts and that it has suspended
its ordinary business for want of funds to carry on the same.
6,
jforemthis Honorable Court^at a certain day and under a cer¬
tain penalty therein to be ’ expressed, then and there to an¬
swer the premises, and to standto, abide by and perform such
jldeoree in the premises as to your Honor shall seem meet and
shall be agreeable to equity and good conscience.
And your orator will ever pray &o.
' Howard W.Hayes
Solicitor for and of Counsel
with Complainant.
[ATTACHMENT]
MONTHLY STATEMENT
Orange, N.J., March 11,1001
EDISON UNITED PHONOGRAPH COMPANY,
TO
EDISON PHONOGRAPH WORKS, DR.
; Office and Works, Lakeside Aveurie.
telephone 305. ' P.O.Box 1008.
1893
Oct. 2 To Mdse. $ 109.10
11 11 11 1 1116.40
" 3 " 10.75
11 6 " 32.02
17
5.05
Nov. 2
2.85
" 2
1.10
" "
7*8.81 •
" " "
74.57
" 11 "
1.80
11 13 "
74.57
Deo. 5 "
471.15
ii Q n
502.40
1894
Feb. 5 "
207.12
1895
Oct. 16 11
.57
1896
Mar. 6 "
1.05 ’
11 25' "
3.58
Apr .20 11
.72
Oot.31 11
243.33
1899 .
July6 "
1115.10
Aug. 16 Interest
825.41
Oct. 23 To Mdse
508.80
Nov. 20 "
22.80 $4409.05
[ATTACHMENT]
1893
Nov. 30 By our credit
1894
June 13 By our credit
Nov. 6 By our credit
1895
July 30 Your bill
Sept. 20 Our credit
1896
Sept. 30 Cash
1899
July 12 Cash
37.07
58.10
2.72
7.95
.18
1062,
[ATTACHMENT]
State of New Jersey:
Ass
Essex County ;
' WILLIAM E. GILMORE, being duly sworn
10 cording to law. on his oath says:
I reside at Orange, in the State of New Jersey, I am the
General Manager of the Edison Phonograph WorkB, the complain¬
ant in the foregoing Bilip I am familiar with the affiars flf
✓
the said complainant ^,/the president of the Edison Phonograph
Works is Thomas A. Edison, who is at this time absent from the
State of New Jersey; I have read the foregoing bill of
3omplaint and the facts therein set forth are true ato the
best of my knowledge and belief. The statement of the
aocount due from the Edison United Phonograph Company to the
Edison PhonoLgraph works, annexed to the Bill is correct,
that amount is due and owing to the complainant and no part
of it has been paid.
Sworn to and subscribed :
before me this 1st day ; William E. Gilmore,
of April, 1901 :
A.Westee,
Notary Public.
( L.S.)
[ATTACHMENT]
I State of New York :
:ss
County of New York s
A, LEO EVERETT, toeing duly sworn deposes and says
ihat he As over the age of twenty one and resides at 152 East
34th Street New York City., and is ah attorney and counsellor
at law practicing at .160 Broadway in the Borough of Manhattan
City of New York.
I That he has made inquiries into the circumstances and
subject matter of a suit entitled National Bank of North Amer¬
ica in New York, plaintiff, vs Edison United Phonograph Com¬
pany and John E.Searles, defendant, pending in the Supreme
I Court of the state of New Yorg: in and for the County of New
York. That said suit waB commenced upon the 7th or 8th day
of Mar oh, 1901 toy the issuance of a, writ of attachment in f avo ’
of the said plaintiff against the defendant Edison United
Phonograph Company on the ground as stated in the affidavit
upon which said writ was granted, that the said defendant
Edison United Phonograph Company was a foreign corporation,
namely a corporation organized and existing under' the laws of
the State of New Jersey. That the complainant sets forth
that the defendant Edison United Phonograph Company executed
on March 5th,1900 its promissory note' as follows.
$30,000. N.Y.March .5,1900.
. Twelve months after date, f or value received, the Edisoi
United Phonograph Company promises to pay to John E.Searles
or order at office of the Guaranty Trust Company in the City
of New York, thirty thousand dollars with interest frcm date
until payment At the rate of six per cent per annum.
ThiB note is one of ten n otes of even date herewith,
exaoljt similar in tenor and amount, made toy the Edison United
Phonograph Company and secured toy trust mortgage dated March
j 5th,lS00, executed toy said Company to the Guaranty Trust Com-
[ATTACHMENT]
I pany’jp trustee. Signed, Edison United Phonograph Company by
John E.Searles, President, E.N. Minson, Secretary (Endorsed
J.E.Searles)
The complainant further alleges that said note came into
the possession of the plaintiff. National Bank of North Amerl-
Ioa in New York, and that the defendant Company haB failed
to pay the same on the due date thereof. Judgment iB demands 1
for the amount of the note with interest and coBts.
The Sheriff of the County of New York in whose hands the
writ was placed in order to, levy upon property of the defen¬
dant company was instructed to serve copies of the attachment
papers upon the Guaranty Trust Company of New York and upon
the plaintiff on the presumption that these parties had
^property of the defendant in their possession.
That he has made investigation into the matter of a trust
ee mortgage executed by the Edison United Phonograph Company
to the Guaranty Trust Company of the City of New York on
March 5th,1900, as security for certain notes executed by the
Edison United Phonograph Company above referred to.
Deponent is informed by oounsel for trustee, under the
trust mortgage and verily believes that the following is a
fair synopsis of said trust mortgage and of the circumstances
attending its execution.
The mortgage recites that the Edison United Phonograph
Company owes each of ten persons $30,000. aggregating
$3009000. for which it has given its notes at twelve months
with interest at six per cent per annum.
This loan is to discharge the Company's indebtedness in¬
cluding its indebtedness to Stephen P.Moriarty.
Stephen P.Moriarty agrees to loan the Company out of the
amount paid him $50,000 on the Company's note payable in tw
[ATTACHMENT]
twelve months at six per cent. For the better securing of th)
$300,000. and the $50,000. the Company deposits 1729 six per
cent preference shares of the par value of,-
<£1° each JE17290.
5047 Ordinary Shares of the par value of £1 ea. .£5047
Five per cent first mortgage debenture stock of the par value
of ,£27260, all being seouritle i
of the Edison Bell Consolidated Phon ograph Company, Limited,
of London, England.
2nd. All the Company's interest in the Deutsche Edison
Phonographen Gesellschaft, Limited, of Cologne, Germany, in¬
corporated on or about October 30th,1895.
3rd. All the company's right in the Compagn ie Franeaise
du Phonographs Edison, and its shares, being 2500 shares of
the par value of 100 francs, certificates fDr which are to be
deposited with Morgan, Harjes & Co. of Paris, which duly
endorsed are to be delivered to the Trustee and 2500 shares
of the said company known as Founder's shares.
4th. All the right of the Company in a contract dated
August 9th, 1889, between it and Bauer & Co. for the organiza¬
tion of a corporation in Austria, Hungary, including the sum j
of £5000 to be paid as in said contract provided.
5th. All the Company's right in the prooeeds of sales of
phonographs now stored in New York, amounting to about $15,00
6 th. All the Company's right in Letters patent for Phono¬
graphs, Graphophones, ,&x. , owned by it from Norway, Sweden,
Denmark, Portugal, Belgium, or any other country.
7th. All the Company's right in contracts now or hereafte ;
made by it *lth the three companies as above mentioned.
8th. All the Company's assets whether herein enumerated
or not, now owned Dr hereafter acquired, together with net
income .
To secure, first, a note of $50,000 to Stephen F.Moriarty
and after the payment of it to secure equally the ten notes
aggregating $300,000.
[ATTACHMENT!
~n
! In case of failure to pay the notes or interest, or i
if proceedings shall be commenced for the appointment of a
Keoeiver, or whereby the control of the ownership of the
property may be affected or disturbed &o., the Trustee on
receiving the notes and on request in writing of the holder
of the notes secured shall declare the entire principal
of the notes due and prooeed to collect the same property
conveyed, and the Trustee may take possession as attorney
in fact of the first part, or as Trustee and may with or
without the order of Court sell the property to the highest
bidder at public auction on such notice and at such timeB
and places as it may see fit of the Court may authorize, and
upon such advertisement in New York, and adjourn the sale, an l
gLve good and sufficient instruments of transfer.
On the twenty ninth day of March, Nineteen Hundred and One
a final judgment was entered in the said suit brought by the
National Bank of North Amerioa, against the Edison United
Phonograph Company, for the sum of Thirty one' thousand three
hundred and Bixty nine 69/100 dollars, which judgment remains
unsatisfied on the reoord of the said Court.
Sworn to and subscribed
before me this 1st day of
April, 1901, before me a
Notary Public of the State
of New York at New York.
C.C.Helm,
Notary Public N.Y.Oo.
(L.S.)
A.heo Everett.
[ATTACHMENT]
State of New Jersey
Essex County
HOWARD Wi HAYES, toeing duly sworn accord¬
ing to law, on hiB oath says:
I am the attorney of the Edison Phonograph Works in
the suit brought toy it against the Edison United Phonograph
Company, mentioned in the foregoffingBill. The summons was
issued March 12th, 1901, and returnable March 21st, in order
to instruct the Sheriff m regard to service I made Inquiry
in the office of the Secretary of State and leatmed that the
last report filed toy the defendant corporation stated its
Office to toe No. 252 Main Street, Orange. I personally made
inquiry at that place and found that the corporation had no
office there. [Dn March loth5°idr. Carriok of Carrick & Worten-
dyke counsellors at Law of thiB State, called on me and in¬
formed me that he represented the defendant corporation and
I that if had established an office in Jersey City, and that he
would enter an appear anoo for the defendants in the above
mentioned suit. I understand that he has done so.
The President of the Edison United Phonograph Company
appears from said report, to toe John E.Searles, who is a resi¬
dent of the State of New York; the vice-president is Stephen
P. Mori arty who resides in London, England, and the SecrBtary
if George M. Mori son, who resides in the State of New York.
Sworn to before me and :
subscribed this 1st day 0f : Howard W. Hayes.
Pred'k C. Fischer
Notary Public for -New Jersey.
[ATTACHMENT]
j
Annual Report for 1900
. EdisenUn&tod . . :•
. Phonograph . Company j
organized under the Laws of the State of j
New Jersey. !
Directors, Officers, &c. !
Filed . May 23 . . . i90O. j
. : . aoorgaJhirla . . . . I
Secretary of State. t
[ATTACHMENT!
Annual Report by a Domestic Corporation.
The. . Edisoi
Organized and Registered under the Laws of the State of New Jersey .
The corporation above named, organized and registered under the Laws of the State of New Jersey, does hereby
make the following report in compliance with the provisions of an act of the Legislature of New Jersey, entitled “An Act
Concerning Corporations (Revision of 1896),” and the various acts amendatory thereof and supplemental thereto,
FIRST— The name of the corporation is_ . Bdl-SOn Unltod Phonograph n ompany
SECOND— The location of the registered office is at No . 252 Main St. T Orange . Stree(
- - - - - - and. . John...T.,Moriar.ty . . .
is the agent upon whom process may be served. ~
THIRD— The character of the business Is— .±n Inatramanta fw
. r'0C'QI'^^n®-an^"c-9®roAttciiis...afiunda.„.aad„„a.ala..af...t.e.ri^.t.o.riai.„.Tlgbis.
FOURTH — The amount of the authorized c.mital stock fo « 1 mn nnn mi. . ,.
issued and outstanding is g 1,000,000.
FIFTH The names and addresses of all the Directors and Officers and the term when
are as follows :
the office of each expires
NAMES OF DIRECTORS.
ADDRESS.
EXPIRATION OF TERM.
John E.Searlos
27 William St., New York.
March 4,1901.
Stephen F.Moriarty
London, England.
March 4,1901.
Thomas C. Platt,
49 Broadway, New York.
March 4,1901.
William C. Lovering,
27 Williams St., New York.
March 4,igoi.
George N.Morison,
27. William St., New York
March 4,1901.
V/inthrop M. Tuttle,
27 William St., New York.
March 4,1901.
George W. Oakley,
27 William St., New York.
March 4,1901.
Frank Hart,
27 William St. , New York.
March 4,190fli.
Edwin B.Hopkinson,
27 William St., New York.
March 4,1901.
officers:
,. President, John E.Searles
Vice President, . Stephen. Ei'Mofciarl
y
2d Vice President,
Treasurer, Y/lnthrop M.Tuttll
Secretary, George N.Morison.
SIXTH— The next annual meeting of the stockholders for election of Directors is a
March 4th, 1901.
ppointed to be held on
thi, CT *7 *T °l C0rpO?t,On has bcen at al1 timcs disPlayed *e entrance of its registered office in
of stock are made aXs Tl h“ k t ^ fa State a in which the transfers
held hv them t , ° Contam,ne the names and addresses of the stockholders and the number of shares
held by them respectively, open at all times to the examination of the stockholders as required by law.
WITNESS our hands the - _ -t-., May
Howard W. Kayes, Esq.,
Newark, N. J.
Dear Sir,
I return to you herewith your letter of June 12th, copy of the
testimony in our case against the Edispn United Phonograph Company,
together with a memorandum from Mr. Edison setting out his recollection
of the old deal made back in 1890.
Mr. Edison requests me to return all papers to you so that you
can think over what he states in his memorandum, and then he will be
glad to see you here any time during the week.
I. am sending this to you by special messenger, so that it
will get to you promptly, and then you had better telephone the Laboratory
and make appointment to meet Mr .Edison.
!:■ am goihg away Tuesday morning early and will not get back
...until Monday morning, June 24th, so you had better communicate direct
with Mr, Edison, through Mr. Randolph.
[ENCLOSURE]
NEWARK, N. J.,„JUn9__12>190J.j, _ 190
William E. Gilmore, Esq.,
National. Phonograph Company, j j[( 1 " j
Orange, N.J. j j
Dear Sir:- 1'--- .
I beg to hand you copy of testimony taken in the Edison Unit¬
ed Phonograph. Company case* The portion of interest is to- Searles1
testimony, which begins at page 11. 1 wish you would ask Mr. Edison to
look this over and I would like to have a tali wi th him before the 2lst,
when the hearing is to he continued, so as to learn That facts he is per¬
sonally familiar with in regard to the ownership of the stock of the In¬
ter-National Graphophone Company. In the meantime, on account of the in¬
adequate explanation by Mr. Searles of the use made of the dividend
checks of the Edison Phonograph Works, I would advise you to send no fur¬
ther ohecks for dividends to the Inter-National Graphophone Company, un¬
til the matter is mq|8 \r) fully ventilated.
I would also say that I have been personally requested hy the coun¬
sel of Mr. Marquand, who Is a stockholder in the Inter-National Grapho¬
phone Company, to request that this dividend check be not sent.’ On ac¬
count of Marquand1 8 age and ill health, hi a counsel does not wish him to
be put in the position of being attacked by the SearleB interest, and
so askedi. me for the present not to oonnect his name with thB matter.
I will try, however, to get from his counsel -a letter to the Works con¬
taining the same request.
I also learn that the sohedule of Searles1 assetB assigned to his
Trustee in bankruptcy includes 20,106 shareB of the Inter-National Graph-
ophono Company Btock, and 2600 share s of the Edison United Phonograph
[ENCLOSURE]
June 12,1901,
NEWARK,. N. J., — ! - -1
William E. Gilmore, Esq. No. 2
Company stock. This last 1b held subject to an agreement with Stephen
F.Morlarity, dated June 10,1897*,
Yours very truly..
[ENCLOSURE]
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[ENCLOSURE]
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d lU Cir- ©■■« ^ ,t^“— 5Jh 2^2-fe
Howard W. Hayes, Esq.,
Newark, N.J.
Ky. Dear ,ltr .Hayes , _ _ .')$T *
I return you letter from H.G.Ward, of Rohinsonf Biddle
& Ward, New York, dated June 14th. I did not. show this to Mr.Edison;
as you will no doubt see him sometime this week, I wish you would explain
the circumstance to him, and then give him your opinion as to holding up
the last payment of dividend to the International Graphophone Co.
YhurB very truly.
[ENCLOSURE]
O
June 14, 1901.
Howard W. Hayes, Esq.,
765 Broad Street,
Newark, N. J.
My dear Hayes:
1 thank you for yours of the 12th and
the copy of the testimony of John Ej Searles.
Mr. Marquand^ Interest Is too small to involwe him
in this matter, considering his age 1 and cares, so
that I would rather not write a letter in his name
to the Edison Phonograph Works .
Very truly yours.
IN CHANCERY OP N EW JERSEY.
Between
Edison United Phonograph Company,
Compl't
-and-
Edison Phonograph Works,
Det
BILL OP COMPLAINT.
Carrick & Wortendyke,
2.
hundred and ninety, for valuable consideration your orator
entered into an agreement in writing with Edison Phonogram
WorkB, a corporation organized under the laws of this State
and of which said Thomas Alva Edison then was, and still 1b
president, whereby your orator granted to the said Edison
Phonograph Works the sole and exclusive right, in all parts
of the world, inoluding the United States and Dominion of
Oanada and all other countries, to manufacture for it, and
upon its order, rfbr'jtba assigns, agents and licensees, hut
no one else, all inventions and iraprovmonts appertaining to
for
phonographs, graphophones, phonograph-graphophones, and speak¬
ing machines of every kind, and all supplies and appliances
specially invented, or created, or to be used with phonographs,
graphophones, or 'other speaking machines, more particularly
described in the said contract or license agreement, a copy |<
which is hereto annexed and marked "Sohadule A". The said
Edison Phonograph Works in arid by the said agreement or c
tract, covenanted and agreed that it would not manufacture alny.i
of the machines, supplies, or appliances which it was thereby
licensed to manufacture, for anyone except for your orator,
and upon its order, for its assigns, agents and licensees, £
that, save and except as in said contract or agreement provlldod
for, it would not manufacture any of the aforesaid machines, |
supplies, or appliances for sale or use any part of the
world, except in the United States and the Dominion of Canada,
and that It would use its be Bt endeavors, either by agreement,
or by suitable marks or otherwise, to prevent any such 'machine?
supplies or appliances which it should manufacture for sale i
use in the United States or in Oanada, from being sold <
used lelsawhere.
3. And your orator further shows that after the i
of the agreements aforesaid, your orator carried on the busil-
3.
ness for which it was organized, and introduced the phonograph,
graphophones and speaking machines which were manufactured
under the patents referred to in the said agreements in var¬
ious foreign countries of the world, excepting the Dominion of
Oanada,r..in some cases by licensing subsidiary companies to
make sale of said phonographs, granhophones and speaking ma¬
chines in opacified limited territories, including a licenst
to the Edison Bell Phonograph Corporation, Limited, (which
was a corporation formed to operate in the United Kingdom of
Groat Britain and Ireland, and in the Isle of Mann, and in
foreign countries, other than the continent of Europe) and « Iso
to the Bdir. on-Bell Consolidated Phonograph Company, Limited,
which was organized in or about the year eighteen hundred ard
ninety-eight, and which i
. to all the rights of the
Edison-Boll Phonograph Corporation, Limited; and your orator
further proceeded, through the organization of subsidiary oon
panies to introduce the said phonographs, graphophones and
I speaking machines, and the granting of licenses for limited
territories to make and control a market therefor, and in so
doing necessurily expended large sums of monoy and introduce d
and created a demand for such machines, and established busi¬
ness connections which wore valuable and through whihh large
profits would have been realized by your orator had the sale
contract under which your orator was operating, and under w] i
the manufacture of the machines by trie Edison Phonograph Wot k
was being carried on, been adhered to and performed by said
Edison Phonograph Works.
4. Your orator further shows that the Baid agreement f
manufacture made by your orator with the Edison Phonograph
Works on or about the eleventh day of March, eighteen hundred
and ninety, contained a clause providing for the manufacture
Of said machines at a cost to your orator which was to be bi si
4.
upon the actual cost of manufacture to ba ascertained as th
.ra-
in stated increased by twenty per centum thereof; but in th
actual operations of manufacture to fill your orator's orde
•s
and in the settlements rondo between your orator and the sai
Edison Phonograph Works, the price of the Bald machines and
supplies wan gonornlly specially agreed upon, outside of th
contract, but it was in ell such cases provided that the sj
»- •
oial terms so made should not operate to abrogate or waive
tho
said contract or any rights thereunder, the said special tt
rms
being a deviation from the terns of tbs contract made for
uch
particular occasions only; that the exclusive right Of sale
of tha phonographs, graphophoncs and speaking machines, cov
- -':i
ered by the said patents in tho foroign countries in which
an
exclusive right had boon granted to your orator, ia a valua
ble
franohiae and privilege, and the said contract of roanufactu
re
with the Edison Phonograph Works, if carridd out and faith-
fully adhered to by the Edison Phonograph Works, subject tc
the
special contracts governing tho price of said machines no £
hove
mentioned, would have enabled your orator to sell tha said
phonographs, graphophonea and speaking machines in the ter?
i-
tory controlled by it at a large profit; but your orator cl
OWB
that the said Edison Phonograph Works at some time after tl
e
racking of the said contract of tin eleventh day of March,
eighteen hundred and niroty, began to, and thereafter eonti
n-
uad to mahhfaoture and sell phonographs, graphOphonea and
speaking machines and supplies and appliances therefor t o ]
or-
•sons other than your orator? without ycur orator's order, '
r
consent, and in violation of the terras of paid agreement, !
nd
to collect the proceeds or such Bales and apply them to it
own uso and benefit, without notification to your orator, i
nd |
without In any way accounting with your orator for the pro
its jj
made by such sales in the said territory of which your ora
Or r|
_ _ _ _
. 1
• ’ j
JL
— - ’ - ^ - =T
,%
rightfully had exclusive control. In many cases such sales
war® mad® hy tha Edison Phonograph Works* or lta agonta, to
the subsidiary companies whioh had been organized by your
orator for the purpose of Introducing said phonographs, gra]
phonon and speaking maohinoo, and of marketing the same, at
prices below the prices at which your orator could profitably
soil to said customers, with the result that said oustomorB
and subsidiary companies declined to purchase phonographs,
graphophonos and speaking machines from your orator, and
thereafter dealt and continue to deal with said JSdlaon Bhon<
graph Worka and its agents, purchasing from snid corporatloij
dir octly or from its agents, without the consent of your on
Between the nineteenth day of September, eighteen hundred arj
ninety-nine and the twenty-third dny of February, nineteen
hundred, the said Edison Phonograph Works sold directly to
Edison-Boll Consolidated Phonograph Company, Limited, of loi
England, which is n company whioh had been licensed by your
orator to vend and sell phonographs, graphophor.es and spook¬
ing machines in the United Kingdom Of Great Britain and irei<
and elsewhere, ns above net forth, to the amount of not losi
than sevonty-nino hundred and seventy-nine dollars ancl twonl;
six cents, and your orator believes that many other nnloo vn
mode to the sold Edison-Bell Consolidated Phonograph Company ,
Limited, and also to others In the territory of which your
.orator has of right tha exclusive control and authority, In
violation of the tormo of the said oentraot of March eleven,
eighteen hundred and ninety. Your orator has not knowledge
sufficient to state with particularity and accuracy what sa^<
have been so made nnd cannot so state until discovery shall
have been mads bysntd Edison Phonograph Works,
B. That on or about the twelfth day of Haroh in the
year of our Lord one thousand nine hundred and one, the soldi
KdiBon Phonograph Works bogan an action at law In the Essex
County Circuit Court, for a balance of on account alleged to
bo due to said Edison Phonograph Works from your orator, and
the bill of particulars annexed to the declaration on file ii
said cause shows that the said plaintiff claims a balance to
be due from your orator of -thirty-one hundred and fifteen dol¬
lars and forty-three cents. Of said balance sixteen hundred
and eighty-seven dollars and forty-nine cents Is made up of
items which aoorued more than six years before the plaintiff
bogan hia action, and which, moreover, your orator avers, we *e
settled and discharged many years ago, and tbs remainder clalme
to bo due includes charges of thirteen hundred and thlrty-f o ir
dollars and twenty-one cents for interest and expenses claim sd
to have been incurred upon n sale of merchandise which had
never been delivered or tendered tb your orator and for whioi
your orator disclaims any liability. It Is possible that thare
may bo a small balance, not exceeding two hundred dollars,
which upon the settlement of tho ;
count in said action at
law may be Justly due from your orator to said Edison Phono¬
graph Works, but your orator claims that upon an aooounting to
be had between it and the said Works, under the terms of the
said contract of the eleventh day of March, eighteen hundred
and ninety, the said balance will not only be liquidated, but
there will be a large balance due from said Edison Phonograph
Works to your orator. Your orator has filod a picas of the
general iaoue and the statute of limitations in tho said ac*
tlon at law now pending in the Essex Circuit Court, but is un¬
able to plead its defence by way of set-off until the amount
justly due from the said Edison Phonograph Works to your orator
shall have been ascertained and fixed by an aooounting, which
ean be had only in this court,
6. Your orator further shows that it is ready and will¬
ing to indemnify the said Edison Phonograph Works for any Jidg-
7.
rnent which it may recover In said notion at lav.-, with intorsst
end costs, by bond with security to be approved by this court,
if said action at lav.' shall be stayed until your orator shaLl
be enabled to have an accounting in this court under the terns
of the agreement of the eleventh day of March, eighteen hunlred
and ninety, in order that the balance so found to be due to \
your orator may be pleaded and set off in said action at lav.
To the end, therefore, that the said defendant may,
without oath, answer the premises specifically, paragraph by
paragraph, as if the same wore here repeated and it were par¬
ticularly interrogated thereto, and that it may sot forth aid
discover what sales of phonographs, graphophones , speaking
machinoa, supplies and appliances covered by the patents hold
by your orator, have been made by it in territory other than
the United States and the Dominion of Canada to persons other
than your orator, or upon your orator's order, since the elsv-
enth day of March, eighteen hundred and ninety, and the nanus
of the persons to whom such sales were made, and the dates <
and the amounts thereof; and also that the said defendant may ->
set forth and show the profit which waa made by it upon eacr of
said sales; and that an account may be taken of said sales, i
and of the profits made by the said defendant; and that it ij
may bo ordered and decreed to pay to your orator the profit b !
so realized by it from the sales made in the territory afbra- |j
said in violation of the said agreement of the eleventh day of
Mar oh, nineteen hundred; end thut said defendant, its offlcsrs, fj
agents and servants may be restrained from selling to, or rnimi- |
facturing for, any persons in the territory aforesaid, other | j
than your orator and such persons as your orator may design ite M
any phonographs, graphophoneB or speaking machines, dr- supplies 1
or appliances therefor, covered by the patents held by your ,
orator; 'iihd thfet the said defendant may ho commanded and en-
8.
Joined to specifically perform the duties and covenants by
t
undertaken in said contract, and that the said defendant maj
be enjoined from further prosecuting its action at law now
ponding in the Essex County Circuit Court against your orat
r
until the termination of this causo, upon your. orat or indemr
l-
fying said defendant with security to be approved by this c
art
against any loss which it racy or can sustain by reason of tl
e
delay in said action at law, your orator hereby tendering it
' 1
self ready to give such security in an amount and with sure!
ies
to be approved by this court and for such other relief in tl
e.
premises as the nature of the case may require and as shall
be
equitable arid just and in accordance with the practice of tl
is
May it please your Honor, the premises considered
to ;
grant unto your orator not only the State's writ of injunct!
on, :
issuing out of and under the seal of this court, directed tc
the said Edison Phonograph Works, commanding and onjoining t
he
said defendant, its officers, agents, and servants, to desis
t
and refrain from selling to, or manufacturing for, any perec
ns, i
other than your orator or such persons as may be designated
by
it, any phonographs, graphophones or speaking machines or si
P-
plies or appliances therefor, covered by the patents, held bj
your orator, Iff anytf.orei'gn territory, . other than the Domini
on
of Canada, until the further order of this court'; and also
enjoining and. restraining the said defendant, its officers,
attorneys, servants and agents from further prosecuting the
action at law now rending byl^aid defendant against your ori
it or •
ini, -the Essex County Circuit Court, until a final decree sha
.1
be made in this cause, or until the further odder of this o
court, but also the state's writ of subpoena, issuing out i
>f . i
and under the seal of this honorable court, to be directed
;o 5
the said Edison Phonograph WorkB, commanding it on a certaii
. _ - _ ir.
9.
day and under uncertain penalty therein to ho expressed, to be
and appear before your Honor, in this honorable court, then and
there to answer the pi'emisoB, and to stand to abide by and per¬
form ouch order and decree therein as to your Honor shall soein
[ATTACHMENT!
STATS 0? vm TOR SB Y )
) S3:
ramson COUNTY )
1
\
:
Cb;orge U, Mbrl h on t of full age , being duly sworn ;
1C-
cording to law upon his oath says that he is the Secretary
}f
Edison United Phonograph Company, the complainant named in
;ho |
foregoing bill of complaint, and has held that office since
the organization of said company; that John 35. Searles, who
is j
the President of said complainant Company, is at present ab-
i
sent from the United States, having recently Bailed for ~ur
>pe;
that deponent has read the foregoing bill of complaint and
ihe
statements of fact therein contained are true; that the ate
#0-*
monts of the bill of complaint as to tho organization of th
complainant Company, its purposes, and its acquisition of t
le
rights under certain letters patent on the eleventh day of
March, eighteen hundred and ninety, and tho making of tho c
m- j
tract, are true; that the statments of tho operations of thi
said oomplainant Company, contained in paragraphs 3 and 4 o;
i [
the bill of complaint, are true, and deponent believes that
allegations of the fourth paragraph of the bill of oomplain
as to the manufacture and sale by the defendant of phonogra;
the
|
)ha
and othermatoriols, in violation of the terms of the agreom
pnt |
with complainant, are true; that reliable information as to
the
sales made by tho defendant to the Edison Bell Consolidated
Phonograph Company, llmitod, tho tetaila of which are set o
it
in said fourth paragraph of the bill of complaint, came to
;he
knowledge of deponent, and of the complainant Company, for
I
first time, on a hearing before the Honorable John R. Emery
;ho |
1 .
one of the Vice-Chancellors, in a cause pending in this Oou|
•t.
|i
wherein the said Edison Phonograph WorkB was complainant ani
L i
Edison United Phonograph Company was defendant, on the eigh
eenth day of April, nineteen hundred and one, when the coun
pel 1
i.
for the aaid Edison Phonograph "'orks admitted in open Court
and
i.
• • • - —L
[ATTACHMENT]
In daponont'a hearing that the sales in said paragraph parti su-
larly v.wntionod had boon mcdo h y t ho defendant and claimed
legal warrant for making same; that the facto oot forth in
paragraph 5 of said hill of complaint an to the pendancy of
tho action at law in the Essex Circuit Court by said Ediuon
Phonograph fortes against the complainant, the nature of the
olaim upon which the action 1» founded and tha defences thent?
aro true.
UuhooribBtl find sworn ) .W^uMnC.
before me at .To rsey City )
{ s )
this '\c^. dny of July, )
A. I). 1901. )
IN CHANCERY OP NEW JERSEY.
E T W E E N,
Edison United Phonograph Company,
Edison Phonograph Works,
Defendant.
IN CHANCERY OP NEW JERSEY.
BETWEEN,
Edison United Phono¬
graph Company,
Complt.
and
Edison Phonograph
Works. .
. .. Deft*
AFFIDAVIT FOR DEFENDANT
Howard W.Hayes,
. Sol' r.
State of New Jersey:
Essex County
■ THOMAS A. EDISON being duly sworn
on his oath says: I am the President of the Edison Phono¬
graph Works, the above named defendant, and have general
knowledge of its affiirs. After the contraot of Marc h 11th,
1890, between the Edison United Phonograph Company and the
Edison Phonograph Works was made, the Edison United Phono¬
graph Company sold its patents for Great Britain to an
English corporation called the Edison-Bell Phonograph Cor¬
poration, Limited, but claimed to have retained a certain
interest in the business. About 1893 the Edison United
Phonograph Company brought suit in this Court against’ the
North American Phonograph Company, a New Jersey corporation,
to restrain it from shipping phonographs to England, and
made the Edison Phonograph Works a party defendant, alleg¬
ing that the latter company had participated in these
alleged acts of the North American Phonograph Company.
While this case was pending the North American Phonograph
Company went into the hands of a Receiver . and was wound
up. The Edison United Phonograph Company filed a claim
with the Receiver for damages. The Edison Phonograph Works
I,
denied any participation in the alleged acts of the North
American Phonograph Company and claimed that the Edison
United Phonograph Company had parted with all its British
rights by the sale of the patents. Other suits were at
that time pending between the Edison United Phonograph
Company and myself and corporations in which I was inter- .
ested. A settlement of all the matters was arrived at
and all the suits were dismissed and the Edison United
Phonograph Company received a cash consideration. This
settlement is expressed in a c cntract a copy of which is
annexed to this affidavit. In accordance with fohe terms
of this settlement the above mentioned suit brought by
the Edison United Phonograph Company against the Edison
Phonograph Works to enjoin it from selling phonographs in
Great Britain was dismissed. I understood that this set¬
tlement disposed of any claim of the Edison United Phono¬
graph Company that it could prevent the Edison Phonograph
Works from manufacturing phonographs for the owners of - the
British patents. After this settlement the Edison United
Phonograph Company assigned to the Edison-Bell Consolidated
Phonograph Company, Limited, the successor of the Edison-
Bell Phonograph Corporation, Limited, all its interest in
the British phonograph patents and in the business in Great
Britain, and the Edison Phonograph Works assigned to this
New English corporation the right to manufacture for Great
Britain, jmdxjfcSH which it had theretofore retained. After thBse
assignments the Edison Phonograph Works manufactured for,
and sold to, the Edison Bell Consolidated Phonograph Company,
Limited, between September nineteenth 1899 and February .
twenty-third 1900, phonographs and supplies to the amount
of seventy- nine hundred and seventy-nine Dollars and twenty
six cents, as it had a right to do, hut has never sold any
other phonographs or supplies to any person or corporation
in Great Britain. The Edison Phonograph Works is an entirely
solvent corporation. It owns valuable real estate in West
Orange and pays quarterly dividends to its stockholders out
nf its earnings. The Edison United Phonograph Company is re¬
puted to he insolvent. It owes the Edison Phonograph Works
over three thousand dollars and has other outstanding obliga-j-
tions 'to the amount of about three hundred and fifty thousand
dollars. All its assets are covered by a mortgage to secure
these obligations. A suit is now pending in this court to
have it declared insolvent and a Receiver appointed to wind it
up. If any decree should be rendered in this suit against
the Edison Phonograph Works the amount would be paid at once
but if a judgment is recovered againBt the Edison United
Phonograph Company it is doubtful if it could be collected,
and any delay probably will make the chances of collecting iu
less.
Sworn to and subscribed
this 19th day of October
1901 at West Orange, before me
THOS. A. EDI SOW
A. Westee ,
Notary Public
Essex County New Jersey
(Seal)
AGREEMENT made this seventh day of April, 1898, be¬
tween EDISON UNITED PHONOGRAPH COMPANY, INTERNATIONAL GRAPHQ-
PHONE COMPLY, EDISON PHONOGRAPH WORKS and THOMAS A. EDISON.
WHEREAS, the following suits are pending in the New
Jersey Court of Chancery and in the New Jersey Supreme Court
the disposition of which is controlled by the parties hereto,
to wlt:-
Edison United Phonograph :
Company,
Complainant, : Court of Chancery.
Docket 3,page 428.
Edison Phonograph Works,
and the North American
Phonograph Company,
Defendants. :
Thomas A.Edison,
Edison United Phonograph
Company.
New Jersey Supreme Count.
On Contract.
Docket 4,page 3.
International Graphophone
Company,
Thomas A.Edison.
New Jersey Supreme Court.
In Tort.
Docket 4,page 1.
George E.Gouraud and
Thomas A.Edison,
Complainants.
and
The Edison United Phono¬
graph Company, Thomas Coch¬
ran, President, George N.
Morrison, Secretary, and H.
Henry Seligman, Treasurer,
and the International Grapho¬
phone Company,
Defendants. ■
Court of Chancery.
Docket 4, page 63.
Thomas A. Edison and
George E.Gouraud,
Complainants,
and
Edi son United Phonograph
Co., Thomas Cochran, Thomas
Dolan, Henry Seligman, D.
Willis James, Henry G.Marquand,
Doriss 0. Mills, Alfred 0 Tate,
and John E.Searles and The In¬
ternational Graphophone Company,
Defendants.
Edison United Phonograph
Company,
Complainant.
and
Thomas A. Edi son and Edison
.Phonograph Works,
Defendants.
In. consideration of the sum of One Dollar, paid hy
each party to the other, and the mutual agreements herein con¬
tained it is hereby agreed as follows:
1. The above-entitled suits now pending in the Chancery
Court of New Jersey and in the Supreme Court of Mew Jersey .
shall be discontinued or dismissed without costs.
2. Thomas A. Edison, shall pay to the Edison United
Phonograph Company the sum of Tv/o Thousand Dollars ($2000.)
immediately upon the distribution of the assets in the hands
of John R. Hardin as Receiver of the North American Phonograph
Company.
111. The parties hereto shall themselves execute and
deliver, and shall cause their solicitors in said suits to
sign and present to said Courts, the necessary papers for car¬
rying out the purpose of this agreement.
Court of Chancery.
Docket 4, page 191.
Court of Chancery.
Docket 4,' page 64.
5.
IV. Edison United Phonograph Company shall withdraw or
release its claim filed with John R.Hardin as Receiver of the
North American Phonograph Company, and shall consent to the
dismissal, without costs to either party as against the other
of the appeal from the disallowance of said claim hy said Re¬
ceiver.
Signed, Sealed and delivered, the day and year first
above written.
EDISON UNITED PHONOGRAPH COMPANY,
By Jno. E.Searles
Attest: President.
G.N.Morlson,
Secretary.
(L.S.)
INTERNATIONAL GRAPHOPHONE COMP AN
By Jno. E.Searles,
Attest: President.
G.N.Morlson,
Secretary.
(L.S.)
Attest:
J.P. Randolph,
Secretary.
(L.S.)
EDISON PHONOGRAPH WORKS,
By Thomas A. Edison,
President.
Witness to signature :
of Thomas A.EdiBon : Thomas A.Edison.
W.M.Mallory.
Legal Department Records
Phonograph - Case Files
Edison United Phonograph Company v. Thomas A. Edison et ai.
This folder contains material pertaining to the suit brought by the Edison
United Phonograph Co. against Edison, trading under the name of Edison
Manufacturing Co., and the Edison Phonograph Works in the New Jersey
Court of Chancery. The case was initiated in May 1 895 and involved a dispute
over foreign sales rights for phonographs. The item at issue was Edison's
"kineto-phonograph" — a phonograph attached to a peephole kinetoscope. The
selected documents consist of the bill of complaint, an affidavit by Theodore
Seligman for the complainant, and affidavits by Edison and Henry Morton for
the defense.
IN CHANCERY OP NEW JERSEY.
Between
Edison United Phonograph ;
Company, j
Complainant, :
and ;
Thomas A. Edison, trading under :
the name of Edison Manufacturing :
:
Company, and Edison Phonograph J:
Works, ;
Defendants. :
BILE OP COMPLAINT,
TO THE HONORABLE ALEXANDER T. MC.G1LL,.
CHANCELLOR OP THE STATE OP NEW JERSEY.
Humbly complaining shows unto your Honor, your
orator the ED1S0H UNITED PHONOGRAPH COMPANY, a corporation
organized under the laws of tho State of New Jersey, that
Thomas A. Edison was the inventor of what is generally known
as tho "Phonograph", which invention is more particularly
described in Letters Patent of the United States, Number
200,521, dated February 19th, 1878, for an "Improvement in
Phonographs or Speaking Machines," and upon and including
which invention Letters Patent in many foreign countries \
have been granted to him, and he was, and remained until the
time hereinafter mentioned, the sole and exclusive owner of
such patents, patent rights and inventions in all such coun¬
tries, and among others, in Prance, Great Britain and Germany.
And your orator further ahows that by an inotru-
ment in writing, dated March 11th, 1090, the aaid Edison
duly assigned, transferred and aot over unto your orator all
his right, title and interest in and to the said Letters Pa¬
tent, except for the United States of America and the Domin¬
ion of Canada, but not including the right to use any of said
inventions and improvements in or in connection with dolls,
toys, toy figures and clocks.
And your orator further shows that by an agreement
in writing, made between your orator and the defendant, tho
Bdison Phonograph Works, executed simultaneously with the
above mentioned agreement, ana dated on the eame day, your
orator granted the aaid Edison Phonograph Works the sole
and exclusive right in all parts of tho world, ineluding the
United States -.and the Dominion of Canada and all other coun¬
tries, to manufacture for it, and upon its order, for its
assigns, agents and licensees, but for no one else, all in¬
ventions and improvements appertaining to phonographs, graph-
ophonos, phonograph-graphophonea, and speaking machines of
every kind, and all supplies and appliances especially in¬
vented or created to be used with them, described in or cov¬
ered by the agreements and patents referred to, and the Baid
Edison Phonograph Works thereby agreed that it would not manu¬
facture any of the machines, supplies or applianoes, v/hioh
it was by said agreement licensed to manufacture, for anyone
except for your orator, and, upon its order, for itB assigns,
agents and licensees, and that except as therein provided,
it would not manufacture any of said machines, supplies or
| appliances, for sale or use in any part of the vrorld oxoept
in the United States and the Dominion of Canada; and that it
would use its best endeavors, cithor by agreements or by
suitable marks or otherwiee, to prevent any such machines,
supplies or appliances, whioh it should manufacture for sale
or use in the United. States or in Canada from being sold or
used elsewhere. A printed copy whereof is offered as an
Exhibit, marked "Exhibit A", and filed herewith.
And your orator further shows that it has had many
phonographs manufactured by said Edison Phonograph Works for
use abroad, and that a great number of said phonographs have
been used by your orator, or its assigns, in foreign coun¬
tries for purposes of exhibition for hiro, and have received
largo revenues from ouch exhibitions.
And your orator further ehbwa that in violation of
said agreements, the said Edison and the said Edison Phono¬
graph Works conspiring together have manufactured and shipped
for use abroad a number of phonographs in connection with,
and which were to be attached to, an instrument called a
“Kinetosoopp", this combined instrument being called a
“Kinetophone”, and the said Edison and tho Edison Phonograph
Works propose to ship abroad many other suoh phonographs, to
be used in a similar manner. That on the sooond day of April,
1095, the said Edison and the said EdiBon Phonograph Works
shipped at least one kinetophone to the Continental Oommeroo
Company, of London, England, and as your orator is informed
and believes, many other shipments of such kinetophones to
various countries, and especially to Prance and Germany, have
been made, and will be made, in the iranediato future.
And your orator further shows that by an instrument
in writing, dated the thirtieth day of November, 1892, your
orator assigned and tranaferrod it. patent righta under eaid
inventions for the Kingdom of Groat Britain and Ireland to
a corporation organized under the laws of Great Britain for
the purpose of acquiring the same, which corporation still is
the owner of said rights, and your orator is the owner of
one-third of the oapital stook of said corporation. And
further, by said instrument in writing, your orator, among
other things, reserved to itself the prior rights to receive
Twenty- three thousand (B23,000) pounds out of the not pro¬
ceeds to be derived by such British corporation, from the
sale or hire by it of the first fifteen hundred (1500) Au¬
tomatic phonographs in the United Kingdom of Great Britain
and Ir&land.
And your orator further shows that a large business
has already boon created in eaid United Kingdom of Great
Britain and Ireland, and that negotiations are ponding for
the sale of the above mentioned rights in tho sale of auto¬
matic phonographs. That said shipment and said threatened
shipments constitute a serious and grave injury to the rights
of your orator, and that as a result of such shipments said
negotiations would be broken off, and should further ship¬
ments of said phonographs and supplies for the same not be
prohibited it will not only be impossible to obtain any re¬
turn for its said righto, but also your orator's interest in
said British Phonograph Company will become valueless. That
j .if' said defendants continue to ship mnchi n«r>, os hereto-
I to various foreign conn tries, exclusive of the
Dominion of Canada, in contravention of your orator ’s
| ri gh its herein, it will inflict cn irreparable injury to
, and heavy damage upon your orator.
And your orator farther shows that, the said
defendants, while not. denying that they are manufacturing
and shipping phonographs attached to and in connection
with the kinatoscope, for the purpose of use in such
foreign countries, insist that the phonographs vhich they.
sr0 so manufacturing and shipping for uso abroad two in
fact manufactured and shipped ibr use in connection with
a toy, within the meaning of the reservation contained
in tho above stated contract. But your orator charges
and insists that the kinetoscopo is not a toy within tfi e
I moaning of such oon tract, or in any sense of the word, but
j is an instrument used far business purposes in giving
or instruction
j amu semen to the public for pay, and its use is in that
respect entirely analogous to one of tlie principal uses
of the phonograph, ibr which the ritfit therein was con¬
veyed to your orator; that at the time of tho making of
said contract, theuco of the phonograph in connection
with toys had a definite and well understood meaning, end
referred simply to the \ise of small wiA inexpensive
phonographs in connection with dolls or animale, or other
small articles, ibr tho amusement of children; and that
one of the well undorotood uses of the phonographs at
•til at time, which was not reserved, was: the use of it in
connection with exhibitions .for the anusement. of the pub-
lio or of individual a, and tho use ibr this purpose j»8
I b^on one of the lariat and moat profitable uses to which
it has boon rut; that tire fcin«toB«opo has toon and i0
made and used fa- the Baino purpose, and a largo business
iS b8taB built tip m the esdii biting of the kinetosoope
I either to individuals ouoooooivoly.th mu (ft -Bio automatic
cabinet kinetoscope in public rooms where the name ia on
exhibition, or also in largo halls, where the moving
piotureo aro thrown upon a scroon in tine pra3onca of a
larga nnrntor of persons* that tho kinetosoope ifl an
expensive and elaborate machine, and is advertised for
sale at the sum of throe to.nrtrad and fifty dollars, and
it is publicly o fibred to persons who propose to exhibit
it and -to matte money out of the exhibition of it, md a
pamphlet publicly distributed, issued by tho Kino to scope
Company, solo agents for tho Unitsd States and Canada,
showing the character and purpose of the kinetoscope, and
the prices at which it is sold, is filed herewith and
marked Exhibit .
And your orator alBo eft a- gas and insists that
tlio kinstophono or kinetophonograph, diioh is the com¬
bination of the phonograph and the kinoto scope, is not a
toy, tot is also used for tho purpose of public exhibi¬
tions for revenue, and has been referred to and described
inApamphlatif issued under the direction of the defendant
Thermo A. Edison, and vath tire approval of an autogrepio
letter of his, printed in facsimile, describing the
kinotophone, or kinetophonojsraph, as an important and
valuable invention, end one which would be of groat
public interest and value, and said is aied
herewith, and is entitled -History of th o Klnetograph,
Kinetoscope, and Kineto-Phonocraph,* by W. K. I,. Dickson
and Antonio Dickson, and nu- ports to haw been copy-
rich ted by V/. k. L. Dickson, in 189ft, not only in iho
United States of Amerioa, but also in Groat Britain,
France, Belgium, Switzerland, Germany, Italy, Denmark
and Portugal, and said pamphlet contains a portrait of
said Thomas A. Edison and a facsimile of the autograph
letter above referred to, and aL no illustrations showing
the character end operation, as well as the results of
the use of the kinetoscope, with a description of tie
kinetoscope and the kinetophone, and th eir uses and mode
of operation; and that -the greater part of the article
published in thi s pamphlet was published in the Century
Illustrated Monthly Macazine, in Hew York, for the month
of June, 189-1, together with a facsimile o.f the seme
autograph letter and reproductions of many of the same
illustra lions, with another portrait of said Thomas A,
! Edison, and in the said autograph letter attached to
I said pamphlet and to the said magazine article. Mr. Edi¬
son describes the idea of the kinetoscope and the kineto¬
phone in, the opening sentence, saying, "In -die year 1887,
die idea occurred to me that it was possible to devise
an instrument which should do ft>r the eye That the phono¬
graph does for the ear, end that by a combination of the
\ two all motion and end sound could, be recorded and re¬
produced simultaneously," and he also said "The following
krtifcole, which gives an able and reliable account of the
, ' inyontion, has my entire endorsation. The authors are
/ 4 -7-
peculiarly well qualified for their taelc from a literary
standpoint and the exceptional opportunities whioh Mi' .
Dickson has had in die fruition of Die writ.* And your
orator re Pars to the said article both in the magazine
and in the pamphlet for a description of die kinotoscopo
and the kinetophone, and it>r an account of thevarioua
important uses to viiich it was proposed to put these
instruments, and fi»r a comparison lie tween Ihe uses of them
and the uses proposed and adopted for die phonograph.
And your orator further shows that from time
to time various accounts of the kinotoscopo and kineto¬
phone have been published in die newspapers, many of -these
publications purporting to be, and no doubt being reports
of interviews with Mr. Edison himoolf, md in these pub¬
lications it clearly appears that the kinetoscope and He
kinetophone we re not regarded by Mr. Edison as toys, but
ns important instruments for public improvement and for
corrmnr ci al enterprise; and a scrap book containing clip¬
pings taken from the newspgpers, as they appeared from
time to time, is filed herewith and marked Exhibit .
And your orator charges and insists that it
is plain from an examination of these articles in the
pamphlet and in the magazine, and also fi'om the clippings
from the newspapers, and from an examination of die
machines themselves, and from Mr. Eeison's declarations
with respect to than, that the phonograph used in con¬
nection with those instruments is not being used in con¬
nection with a toy, within the moaning of the reservation
of the contract; and that in making and shipping the
k inotophone for uce abroad, the defondants are doing so i
violation of the rights of your orator under its contract
Forasmuch as your orator can have no adequate
relief, except in this Court, shew such matters are pro¬
perly cognisable end -movable, rmrl to th, ^ thopfl.
discovery of all the matters aforesaid, according to the
best and utmost of its knowledge, remembrance, infoimn-
tion and helief, and full, true, direct and perfect answs
make to all the matters hereinbefore stated and charged;
but not under oath, an answer under oath boing hereby ex¬
pressly
Awaived; and especially that they may discover and make
known how many phonographs and phonograph supplies thoy
and for what prices, end also that the defendants may bo
decreed severally to account for and pay over the income
and profits thus unlawfully derived from the violation of
your orator's rights, end may bo restrained from making
any shipment of phonographs and supplies for and parts of
the same in connection with the klnotoscope or otherwise,
and iron making any further shipments for sale or use in
any foreign country, except the hominion of Canada, di¬
rectly or indirectly, and that upon the rendering of the
decree above prayed, the damages your orator hae sustained
by reason of such violation of its rights, may bo assessed
or caused to be assessed, and that a provisional or pra-.
liminary injunction bo issued restraining the said defend¬
ants from any further violation of your orator's rights
pending this cause, and particularly from making the ahip-
-9-
ment of phonograph*., or suppli « or appliances for the
same, hereinbefore mentions, and that your orfetor may
have such other and further relief aG the equity of tho
case moy require, and to your Honor ahull seoin mW)t<
MAY IT PLRASR YOUR HONOR to grant unto your or¬
ator not only a writ of Injunction eonformahl,, to tho ,
prayer of this bill, commanding the said defendants, their
servants end agents wholly to desist and refrain from leas
ing, selling, delivery or shipping ;,ny phonographs or sup¬
plies for or parts of the same in connection with tho Kin-
otosoope or in the form of the Kinetoahono or Xinotophono-
graph, or otherwise, directly or indirectly, for sale or
use in any part of the world except the United States and
Canadas, but also a writ of subpoena, directed to the said
Thomas A. Kdison, trading under the nano of Rdinon Manu¬
facturing Company find Edison Phonograph Works, commanding
them and each of thorn on a certain day to appear and an¬
swer unto this bi»ll of complaint, and to abide and perform
such order and decree in the promises, as to the Court
shall seem proper and is agreeable to equity and good con¬
science.
A. Q. Keasbey & Sons,
Solicitors
& of Counsel with Complt.
IN CHANCERY OP HE?/ JERSEY.
Between
Ediaon United Phonograph :
Company, \
Complainant :
and •
Thomas A, Ediao.n, trading under :
the name of Edison Manufacturing :
Company, and Ediaon Phonograph :
Works, .
Defondan ts . :
STATE OP NEW YORK
CITY AND COUNTY OP NEW YORK
THEODORE SEL1GMAH, of full age, being duly sworn,
on his oath, says that he is the General Counsel of the Edi¬
son United Phonograph Company, the complainant in this suit,
and has had oharge of its business since its organization;
that he has read the above stated bill of complaint, and that
the enid bill is true to the beet of his knowledge and be¬
lief; and in particular deponent says that said Thomas Alva
Edison entered into a contract with the Edison United Pho¬
nograph Company, Bearing date the 11th day of March, 1890,
containing the provisions Bet forth in the bill of complaint,
and that the rrinted copy, marked as an Exhibit^ and filed
with the bill, is a true copy of said agrooment, the agreement
itself being now in the possession of the agent of the com-
Iplainant in England, and of Hr. Mlaon himself.
fhat the. complainant made a lieenso agreement to
and with the defendant, the Edison Phonograph Works, dated on
the 11th day of March, 1090, containing the provisions set
forth in the bill of complaint, and that the printed oop.
ft,
of said agro<anent, filed with the bill ao an Exhibit, ia a
true copy of said agreement, tho original being in the hand a
of the agent of the complainant in England, and in the pos¬
session of the Edison Phonograph Works, defendant herein.
That deponent, having loarnod that the defendant
Edison Phonograph Works was manufacturing phonographs for the
purpose of using them in oormeotion with the kinotoBcope in
Europe, under tho dlrootlon of Thocrno A. au.an, and boins
satisfi ed that this was true, wrote the following letter to
the defendants; on April 2dth, 1895:
"We hereby serve you wi tli notice of our objection to
the sale either directly or indirectly of any phonographs or
phonograph parts to Hr. Gladstone or McGuire & Bancus, as we
arc informed that they are engaged in shipping the same to
Eiurope .
We have also received information that you propose
shipping a number of kinetophonoB, and we object to ouch ship¬
ment as far as the phonographic portion of this instrument is
concerned.
You have no right to manufacture or ship phonographs
except by order of the Receiver and oursolves. Tho Reooiver
is not interested in the kinetorhone, and such shipment would
only be for use in our territory. Wo bog to remind you that
Itho restraining order affeoting the shipment of phonographs
or graphophonos either diroctly or indirectly to foreign
countries is still in force, the disobedience of which would
be contempt of court, and if wc find that you have made such
shipment, in spito of our mroinc nna objootion, y/e shall ao
our utmost to have the oourt inflict the fullest penalty up¬
on you for such contempt."
Whereupon Richard N. Dyer, as Counsel of the Baid
Edison and the said Edison Phonograph Works, stated to de¬
ponent that the defendant Edison claimed that the kineto-
acopo was a toy, within the meaning of the above mentioned
contract of March 11th, 1390, and that tho said Edison pro¬
posed to continue shipping kinatophoneB;> and thereupon wrote
the following let ter: to deponent, on May 15th, 1895:
"With regard to tho shipments of kinetophones abroad,
1 beg to inform you that one of such instruments was shipped
April 2, 1895, to the Continental Coumeroe Co., of London,
England. Thin was tho first shipment, as 1 understand it,
and will enable you to commence your proceedings. You can
allege such a shipment and tho fact will be admitted.*
Your deponent further says that the kinetosoope is
an invention, which consists of a maohino or appliance for
the taking of a series of instantaneous photographs of mov¬
ing objects, and another maohine wherein said photographs are
mounted and rapidly revolved, so as to reproduce tho appear¬
ance of moving objects. That the kinetophone is designed to
combine this result with tho rosult of tho phonograph, by
operating this machine synchron&Sely with the phonograph.
so that tho phonograph shall record the sounds which accompany
the appearance of the moving objeota, and shall reproduce the
sounds in connection with the reproduction of the appearance
of the objects; so that by means of the combined machines,
constituting the klnotophono, thoro oan be proaorvod. and ro-
ppoduced any event to which the combined instrument has been
directed.
Your deponent further says that is true that al¬
though the complainant ha3 assigned its patent rights under
said inventions for the Kingdom of Groat Britain and Ireland
to a corporation thore organised, and that eaid corporation
is still tho owner of said rights, the complainant is the
owner of one-third of the capital stock of oald corporation,
and in the instrument of transfer, reserved to itself the
prior rights to reooive £23,000 out of the net proceeds to
be derived by such British corporation, from the sale or hire
by it of the first 1500 automatic phonographs in said United
only a few of which have been sold or hired there,
Kingdom, and that a largo business has been created in said
Kingdom, and that negotiations for tho sale of the above
mentioned rights are pending with respect to automatic pho¬
nographs, as stated in the bill, and that it is true that tho
shipment by tho defendants of phonographs for use in tho
United Kingdom of Groat Britain,- and other foreign oountrioe,
and the danger of future shipments, constitute a serious and
grave injury to the rights of the complainant, not only as a
stockholder in the English Company, but also as ovmer of tho
prior rights reserved in tho automatic phonograph, and as
the owner of phonographic rights, patents and business in
all parts of the world outside of the United States and
Canada and that there is great danger that as a result of
such shipment^ the negotiations above referred to will be
broken off, and that if phonographs and supplies can be
shipped fran this country by the defendants or others, it
will be impossible for the complainant to obtain proper
value for its patents and patent rights, or to make salon
of phonographs, or to lease phonographs at their proper
value, of obtain any adequate rental for its rights in
said invention in such foreign countries; and this depo¬
nent further says that it is true that the said defendants
do not deny that they are manufacturing and shipping pho¬
nographs to the United Kingdom of Great Britain and Ire¬
land, and otha* foreign countries.
Sworn to before me thin :
: Theodore Seligman.
31st day of May, 1895, :
Witness my hand and official seal,
(Ii.S. ) Charles Taylor,
Conrmisaioner for New Jersey,
At New York City. New York.
| In Chancery of New Jersey I
!' Between ■
Edison United Phonograph Company
Complainant
jj , and I
|| Thomas A. Edison, trading under j
the name of EDISON MANUFACTURING
jj COMPANY, and EDISON PHONOGRAPH
|i WORKS
Defendants.
■ AFFIDAVIT OF MR. EDISON.
; State of New Jersey : j
; County of Essex : ss . Thomas A. Edison, being dulj; sworn, j
deposes and says as follbws:
I have read the bill of complaint
j; in this case and the affidavits of Theodore Selignan, Charles
|; L. Marshal and George N. Morison-
In 1888 the North American Phonograph Company was organiz
! ed to handle the phonograph business in the United states and
Canada, and in 1890 the Edison United Phonograph Company was
organized to handle that business for all other countries,
j The belief was that the great field of usefulness for the pho-
! nograph and that which waranted the large capital of these
companies was the employment of the phonograph in business
houses, by professional men, authors and others for dictation
I a
i purposes, to take the place of stenographers and furnish cheap
and ever ready apparatus for recording and reproducing dicta-
; tion. This was the commercial use of the phonograph, ard to i
| developing that use the efforts of the two companies referred !
I: to were entirely directed. The use of the phonograph for
I amusement purposes was considered of little or no value by the
'promoters of those companies ard has always been d is com’ aged
by the companies themselves. It was thought to be a use based!1
up on tire novelty of tire phonograph which would soon pass away,
j: ard would be a bus iness too trivial in importance to warrant
the serious attention of business men.
: In my contract with the Edison United Phonograph Company
ill reserved tire amusement feature of the business. It is per- ;
jj haps true that that broad idea was not aptly expressed in
■view of the subsequent developement of the business, but our ;
II views at that time were that the phonograph would be used for |
'i! amusement purposes in connection with figures, either pioto- '
jj rial or tangible, and would furnish the words or music, or
I both, which would properly accompany the figures, and conse-
lj quently in reserving the use of my inventions and improvements
!' id or in connection with "toy figures" I considered that the
j ground was adequately covered.
The words "dolls", "toys", "toy figures" and "clocks" all
jj had an independent significance. For clocks, it was always my
jj intention, and had been so stated long prior to the contract
jj in question in various publications, to use the reproducing
j elements of the full-size phonograph to call out the houBs inj
i place of or in conjunction with tile ordinary striking of the j
j hours, or to play a tune as the clock strikes, thus replacingj
j the "chimes", or to both call out the hours and play a time, j
J
| The use of the inventions "in or in comeotion with" dolls 1
,iis a clearly expressed reservation, coverirg a doll figure
|jW^ioh may enclose the reproducing phonograph directly within
|| itself or the reproducing phonograph may be located in a base
jji^on which the figure is placed, in a doll house in which
[dolls are airanged, or in numerous other ways*
S The reservation of the use of the inventions "in or in
[.connection with "toys was intended to cover a much wider
'ground. Under this reservation, the reproducing phonograph
might itself be made of small size and used as a toy music
box or toy-speaker without putting it in relation with other
parts, ,i. j). , it might be made as a toy itself, or it could be
ipsed either full-size or in minature in connection with the
numerous kinds of toys known at the date of the contract or
.subsequently produced, and including the multitude of "auto¬
matic" or moving toys, some cheap and others costly, the nanu-
ifacture of which forms a large industry .in some parts of
Europe.
ji The reservation of the use of the phonograph in or in
connection with "toy figures" was intended to have a still
wider significance. The word "toy" was used in the sense of
jjimitation" or "artificial", as distinguished from "natural".
The reservation was intended to cover the use of the phono¬
graph for amusement purposes in or in connection with figures,
whether tangible or only pictorial, and of all sizes. My
ijdeas on this subject of a date long prior to the contract
under discussion in this case, covered many forms of figures.
jjOne plan I had, was a figure representing the leader of an
orchestra swinging his baton and mounted upon a box or base in
which the renroduoirvr ubonnimnnh in lnn.+aH,
!: ard ’baton being connected together or timed to work in unison,
j; Another plan was a full-size or part size speaking or Binging i
ij figure with the phonograph located within it or in the base on
■which the figure stands. Such a figure was to have the jaws :
jj aid lips move so as to produce a natural effect. I made many !
|j experiments looking towards accomplishing thi3 result, by oon-
i necting the jaws and lips with a recording point so that as
: the record of the voice was made on one cylinder, the move¬
ment of the jaws and lips would be recorded on another cylin¬
der, and from this latter record the jaws and lips of the fig-
; ure were to be operated by a suitable mechanical connection.
I could mention many ideas I had in this and similar direo-
: tions, and I have made many experiments to carry them out.
|| It will be understood that in all these reserved uses, j
j; only the reproducing elements of the phonograph are employed j
The complete or commercial phonograph has also recording de- ’
ij vices. and is designed both tomreoord and reproduce sounds. j
In the developement of the phonograph business, and withy
|i in the last two or three years, the use of the phonograph for !
ij exhibition purposes has becoms of importance. For this pur-
!; pose an ordinary phonograph is provided with a musical or
j| speaking record and a small fee is charged to each person whoj
!i listens to it, or the phonograph is mounted in connection with
i a coin-actuated attachment for starting its motor. The latter
| is known as the"automatic* or "nickel-in-the-slot" phonograph
! Although this is a use of the reproducing phonograph which I ;
! consider within the spirit of the reservation of my contract j
I with the Edison United Phonograph Company, yet the instrument
I being used aldne and riot in connection with apy "figure", I
j have never questioned the right cf that company to this use. ;
The Kinetophone which the complainant seeks to enjoin
me from shipping to foreign countries, is the "linetosoope"
with a. few parts of the phonograph attached to it so as to
®^able musl° to be given accompanying the mi nature dancing |
| figures or other movement which the kinetoscope displays. The I
phonographic attachment is only a fragment of a complete or !
j, commercial phonqgraph, without motor of its own but driven by
: the motor of the kinetoscope, and having none of the recording'
I devices of the phonqgraph; it is capable of no other use ex-
! oept to accompany the figures of the kinetoscope. The kinet^ i
1 oscope itself is a mere toy and has always been so considered i
| by me, and by many others, as will appear from the numerous
i| accounts of the device which have appeared in the newspapers.
I1 1 attach hereto a few of the hundreds of cli; pings in mv pos¬
session showing this fact.
:: The "kinetograph", which is an instrument by which
photographs of moving objects can be taken in rapid succes-
; sion, is a somewhat complicated and delicate apparatus and
.requires an expert to handle it. That instrument I do not
i consider a toy. It embodies whatever there is of merit in
: the entire . subject ani is a highly useful apparatus*
r The kinetoscope, however, is only an improved and prefee-
I ted zoetrope ftr displaying the kinetographio pictures. The \
;i strips upon which the pictures appear carry a series of pho-
tograpte of a moving object, each photograph being only
three -quarters of an inch long. The kinetoscope moves one of i
iitheso- strips rapidly past the eyepiece of the instrument so I
ijthat the pictures blend one into the otter ani produce tile im¬
pression of eontmous motion. This is just what is done in
ra crude way by the zoetrope. The principal differences be¬
ll tween the two, are that the zoetrope is moved by hard, while
^ the kinetoscope has a motor for giving uniform motion, ate. the!
i pictures in the kinetoscope are more numerous and hence pro-
Ijduce a more perfect effect. But these differences are all-
ijWithintiie principle of the zoetrope and are such as would
i! naturally be recognized as required to make a good zoetrope- :
i|The zoetrope has always been considered a toy. I attach hereto
j|to a copy of the. description of the zoetrope ate of soire toys I
.of. other names employing the same principle, taken from Knight'
j;Meohanioal Dictionary. The sameness of the kinetoscope ate o
jzoetrope has been remarked by the newspaper writers, as will
jappear by the clippings already referred to. Tho kinetoscope v
|is no larger than the zoetrope, the pictures of the former ba¬
ling actually smaller than usually employed in the latter,
ji For the reasons I have given, I have always considered
jj the kinetophone to be within the reservation of my con¬
tract with the Edison United Phonograph Company. The kineto-
[scope, in connection with which some parts of the phonograph
!! are used to constitute the kinotophone, is a “toy" and is
[also an instrument for displaying" toy figures" an.l comes
|i within the field of amusement which I reserved both by the
jj spirit and the letter of the contract.
I
!| The statement made in the moying papers that the com-
plainant expects to secure a^libor a 3. amount of money from the
sale of aut matic phonographs in England by the English Com¬
pany which owns the rights for that company, ard that the sain
[of kinetophones in England will interfere with that business,
1 consider disingenuous and misleading. In the first place
jj the two instruments are not competing instruments, and the
[sale of kinetophones induces the sale of phonographs rather
;j than prevent it. In the seoond place, neither the oomplain-
j ant nor the English Company referred to has made any effort
jj to exploit the phonograph for amusement purposes,
j Since the date of my contract with the complainant, the
l oomplainant has only ordered from the Edison Phonograph
j Works, fifteen hundred phonographs, an.l these I am informed
and believe have practically all be taken by the English Com-
jpany. This total number of phonographs was ordered by two
j orders, the first order beingfor one thousand and the second
order for five hundred machines. These orders were filled in
i the year 1893 and in the spring of the present year respect¬
ively. The first order included two hundred and fifty re¬
producing phonographs designed for exhibition or amusement
purposes, one hundred automatic phonographs for the Bamo pur¬
pose ard six hundred and fifty commercial phonographs.
Subsequently the English Company ordered from the Edison
i Phonograph V/orks the necessary parts to change one hundred
of the two hundred and fifty amusement phonographs into mach¬
ines which would record as well as reproduce.
What beoame of the one hundred automatic phonographs !
;j I do not know, but I have never heard that they were put into
j: «se. I have reason to believe they have not been, because
ii the complainant and the English Company have always refused
j. to sellmtheir phonographs although I have repeatedly urged
j: them that that is' the proper way to carry on the business
| and it has never been possible to carry on the exhibition
; business by renting machines.
ji The second order before referred to was, for five |
: hundred commercial machines. Neither the oomplainant nor j
the English Company has ordered a single automatic phonograph
■i since the order filled in 1893 for one hundred of such mach- :
bV ' . ■ ' “ ' - ' ' ■" - ' ' * ' •
ji ines. If these Companies had made any proper effort to in
| troduoe these automatic phonographs, they could indoubtedly .
ji have disposed of several thousand machines. Consequently I j
ji consider the reference to automatic phonographs in the mov- •'
| ing papers, and the assertion that the sale of kinetophones
jin England will interfere with the sale of automatic phono-
I graphs by the English Company, as disingenuous and raislead-
! ing.
j Another statement of a similar character in the moving j
I papers and made in the same connection, is that at the date !
j of my contract with the oomplainant, one of the principal
: uses of the phonograph was for exhibition purposes. The fact
I is that that use of the phonograph amounted to little or
j- nothing in March 1890, and has been entirely developed since.
All the rights of the Edison United Phonograph Company
■ ln the 00ntraot with mo so far as it relates to England and'
I, all its rights in my English patents, including the manufact- I
uring rights under whose patents formerly held by the Edison |
Phonograph Works , have been sold and assigned to the English
: Company. The Edison United Phonograph Company is only a
jstockholder in that Company. Besides this, it is my belief,
| based upon facts I have already stated, that the plan of the ;
i; 00mPlainantand the English Company to market automatic phono-
^graphs in England tea f&^been abandoned. I do not see, !
li theref°re> what riEht the Edison United Phonograph Company ’ j
jihas to obtain an injunction against shipring phonographs in |
!! any form into England. |
Further than this, the sale of kinetophones in England .j
j; cannot interfere with the business of the English Company. j
| That 0omPany is not in the business of supplying 3uch in-
!j struments itself and is not -in position to supply the de¬
ll mand for them.
f • •
jj In olnsing this affidavit, I wish to state that I oon-
| sider that the complainant has not dealt^with the Edison
j Phonograph b. Works':— and myself in the handling of the foreig |
j phonograph business. That oompany has always refused to
sell phonographs and instead of actively promoting a oonmerc- i
Jjial business as contemplated by the contracts has devoted it- J
| self t0 efforts to sell territorial rights. The result has j
|j been that the foreign business has amounted to very little. I
|; Besides this the failure to sell machines and properly ex¬
ploit the business has resulted in the forfeiture of many of !
[my patents in foreign countries. Some of the French patents j
| have ^cently been decided by the French Court to have been |
I; SO forfeited. The course which the complainant has pursued j
j; has not only resulted in the failure to make profits out of tb
ij the enterprise, but has greatly reduced the value of the prop-
9rty» which I turned over to the complainant for an interest
| *n tts capital stock. Besides, this, I have carried on the
I Edison Phonograph Works at a considerable loss, in expectation
: of a large foreign business which I was lead to believe would
| he secured from the representations of the promoters and man- I
j; a€ers of the complainant. At the present time the phonograph1
• business of the whole world outside of the United States and j
ij Canada is locked up and practically unused by the complainant.;
This has not only resulted in serious loss but also in
considerable embarrassment to the Edison Phonograph Works, he-f
|| cause merchants in foreign countries seeing a demand for phono
|j graphs which the complainant refuses to supply, purchase pho- j
|| nographs through dealers in this country; ani the complain- I
Ij ant erroneously claiming that the Edison Phonograph Worksi'has !
|| conspired with others to produce this result and has pursued I
jj the Edison Phonograph Works with harrassing and expensive lit¬
igation.
Subscribed and sworn to : Thomas A. Edison
b 3f ore me this 17th day of :
June 1895. :
Rich. N. Dyer
Notary Public
j(SEAL) State of New Jersey
I: United States of America :
j| State of New Jersey :
I County of Essex : I, HOWARD W. HAYES a Notary Pub-'
lie in and for th e State of Nav .
i! Jersey do hereby certify that ihe foregoing is a true copy of:
an affidavit made by Thorns A. Edison and now on file in the j
jj office of the Clerk of the Court of Chancery of the State of
|| Nav Jersey. i
jj Witness my hani and official seal this tv/enty first day
! of June Eighteen hundred and ninety five at the City of Newark
j| in the County and State aforesaid.
IN CHANCERY OR NEW JERSEY.
EDISON UNITED PHONOGRAPH COMPANY
Complainant ,
THOMAS A. EDISON, trading under the)
name of Edison Manufacturing Com- )
Pany, and EDISON PHONOGRAPH WORKS, )
)
Defendants. )
AFP T DAVIT OF DR. MORTON.
I State of Hew Jersey)
j ss:-
County of Hudson. )
HENRY MORTON, being duly 3 worn, deposes and
| says a 3 follows:
I am president of tho Stevens Institute of Tech¬
nology, looated at Hoboken, New Jersey.
I am asked to give my opinion as to the char¬
acter of the klnetoscope, and as to v/hether the instrument is
to be regarded as a toy or an apparatus for displaying toy
figures. In this regard, it appears to mo to come within a
class of apparatus with which I have been for thirty years or
more very well1 acquainted; namely , the class of apparatus
first known as the thaumatrope, and later, under various modi¬
fications, described as the anorthoscope, phenakistoscope,
stroboscope, rotascopo, zoetrope, etc. I recollect very well
i a child, seeing certain forms of this apparatus, and
about thirty years ago had occasion to examine a very large
collection, containing every variety of such apparatus produced]
to that date, this collection having been made by Mr. Bank-
of Philadelphia, who had, polleoted great quantities of
I philosophical toys, as well as of philosophical instruments,
and a portion of whoso collection of the latter sort I pur¬
chased for the cabinet of the Stevens Institute in 1870. Prom
that time on I have from time to time examined and experimented
with such apparatus, having used certain varieties of it for
purposes of illustration in connection, with some of my own
public lectures on light and vision, but such: structures I
have always regarded as essentially toys, whose main purposo
was amusement, although, of course, they nerved to illustrate
certain properties of vision and of light. The kinetoseopo
is, I think, manifestly simply the latest improvement or de¬
velopment of this sort of structure, that is, a means of giving
to the eye, by the use of pictures, the impression of living
or moving objects. As to the effect produced, there is noth¬
ing substantially ;iev/ or different in this instrument, as com¬
pared with the older ones, except a greater perfection, due to
the greater number of slightly different pictures, which, in
rapid sxicceasion, are brought into view. And as to the moans
by which this better result- is secured, there is also nothing
new in a radical or substantial: way, but only such improve¬
ments mid refinement in the method of applying the general
principle as would naturally suggest themselves to an ingenious
constructor who wished to improve upon thie.anuising and curious
toy. .i-v
It is thus, as I said at first, in my opinion clearly
and manifestly a toy, and I have always so regarded it and so
described it. It also is very correctly defined or described
as an apparatus used for displaying toy figures; or, in other
words, the figures which this apparatus shows or displays
are manifestly toy figures, that is, they convey the impres¬
sion to those looking at them, of toy-like figures, or as being
>e regarded as clearer than this expression "toy figures" it¬
self to convey clearly to the mind the same impression which
>ne receives on looking through this apparatus.
pub scribed and sworn '
this /o*; day of June;
> before me
1095.
<^yieTy^y^~-
'JlpfoJlyj
Legal Department Records
Phonograph - Case Files
Jose Elizondo et a/, v. Jorge Alcalde
This folder contains material pertaining to the suit brought by Jose F.
Elizondo, Luis G. Jorda, and Rafael Medina against Jorge A. Alcalde in
Mexico. The case was initiated in 1906 and involved alleged copyright
violations by Alcalde, an agent of the Mexican National Phonograph Co. The
selected items consist of letters concerning the case, along with
correspondence between attorneys representing the National Phonograph
Co., the Victor Talking Machine Co. and the Columbia Phonograph Co.
regarding musical copyright in Mexico. Also selected is a copy of the court
decision in a related case involving Elizondo and S. V. Schmill, an agent of
the Victor Talking Machine Co. in Mexico. Related material can be found in
the archival record group, National Phonograph Company Records.
Orange, H. J. Feb. 1, 1906
Jorge A. Alcalde, Esq.
San Jobs El Real Ho. 10.
Mexico City, Mexico.
My dear sir:-
Your letter of the 20th ult. to Mr. Walter SteV9ns, Ma-
nanger of tho Foreign Department of the Rational Phonograph Company,
has been referred to me.
I note that suit has been brought against you on behalf of
certain Mexican authors, alleging infringement of their copyrights by
the reproduction of fragments of their works on our records. I suggest
that you immediately consult my correspondent in Mexico, Mr. Y. Sepulve¬
da, Mortgage Bank Building, who is entirely familiar wiht the law regar¬
ding patents and copyrights in your country. Personally, X hov^no know¬
ledge of the ArtiBtic and Literary Property Law, to which you refer in
your letter and do not know to what extent intellectual property is
protected in Mexico. Assuming, however, that the law in the United Sta¬
tes bn this point and that the decisions of our Counts based thereon may
have some weight with tho Mexican Courts in a deeision of this question,
the following expression of my views may have some value.
Copyrights in the United States are recognized by statute and
not by the common law . Section 4952 of the Revised Statutes provides thaht-
"The author..... of any . .
dramatic or musical composition .
shall . . have the sole liberty of
printing, re-printing, publishing, com¬
pleting, copying, executing, finishing
and vending the same."
In the oase of Kennedy et al vs. McTammany, (33 Federal Reporter page 584)
the question was considered whether the making of perforated sheets of
paper for use in organettes to reproduce copyrighted music was an
infringement of the registered copyright. The case was decided by
Judge Colt in the United States Circuit Court for the District of
Massachussetts, who said:-
"Copyright is the exclusive right of the owner
to multiply and to dispose of copies of an in¬
tellectual production. I cannot convince myself
that these perforated strips of paper are copies
of sheet, music, within the meaning of the copy-
righat law. They are not made to b£ addressed
to the eye, as Bheet music, but they form part
of a machine. They are not designed to be used
for such purposes as sheet music, nor do they
in any senoe occupy the same field as sheet
music. They are a mechanical invention made
for the sole purpose of performing tunes mechan¬
ically upon a musical instrument . The bill
itself statee that they are adaptadand intended
for a use wholly different from any use possis
ble to be made of the ordinary sheet music.
Their use resembles more nearly a barrel of a
hand-organ or music box . X find no
decided cases which directly or by analogy
support the position of the plaintiffs, and it
seems to me that both upon reason and authority
they have failed to show any infringements of
their copyright, and that therefore the bill
should be dismissed."
A similar question was recently considered in the case of the
White-Smith Music Publishing Oompany vs. Apollo Company (139 Fe¬
deral Reporter, page 437) by Judge Hazel in the United States
Circuit Court for the Southern District of Hew York. In this oase>
the perforated sheets of music were adapted to be used in connec¬
tion with mechanical pl$no players. The Court said:-
"Are the perforated' music sheets or rolls
whioh are designed to mechanically represent
or reproduce the copyrighted musical composi¬
tion, oopies thereof, within the meaning and
.intent of the statute? What did Congress
intend by the words 'muaioal composition*?
These questions, though not entirely new;
are interesting and important. The words
» t II
No.' 3-J.A.A.
'rausioal composition* undoubtedly relate
to tho intellectual conception of the composer;
hut manifestly a careful reading' of the copy¬
right law in connection with the authorities
oonstruing the act, indicates that protection
only of the material^ semblance in which the
musical composition finds expression ia af¬
forded . The musical composition,
as an idea in the concrete, is nd^oopyright-
able as such. That which reives the concep¬
tion oorporeal and tanreible existence is
the subject of copyrighting. To hold other¬
wise, indeed, would be a wide departure from
the obvious intention of Congress in extending
to the author, inventor, designer, proprietor,
etc., the protection secured by statute. *
it i n i » 1 1 1 woraB 0f -thg statute have refer¬
ence to the tangible object that appeals to the
sence of sight, and that which is susceptible
of being reproduced by printing, copying, pub¬
lishing, etc . • » • » i »t 1 1 1 1 1 » i j am 0f opinion
that tho reforence to musical compositions
as employed in Section 4052 is restricted to
writing, as that word is defined in the Sarony
Case."
The Sarony case referred to by Judge Hazel was decided by the
United States Supreme Court, the case being entitled "Litho¬
graphic Company vs. Sarony", and tho opinion appears in Volume
111, United States Supreme Court Reports, page 53. The Supreme
Court, in oonstruing the word "writings" as employed in our
Constitution, held that it includes "all forms of writing, printing,
engraving, etching, etc., by which the ideas in the mind of the
author are .given .visible expression."
The only case that I am familiar with where the ques¬
tion of infringement of copyrights by phonograph records was con¬
sidered, is that of Stern et.al vs. Rosey, decided by the Court of
Appeals in the District of Columbia and published in Volume 17 of
the Reports of that Court, page 562. In that case it waB urged by
the complainants that two of their copyrights^ were infringed by
the sale of duplicate phonograph reoords, containing the words and
music of the copyrighted songs. The Court Said:-
"The contention hereunder is that the
reproduction of the music and wordB of
appellants' publications, in the manner and
for the purposes described in the bill is
the actof publishing or copying the Bame
within the meaning of the aforesaid act.
This contention we are also constrained
to deny. We cannot regard the reproduction
through the agency of the phonograph, of the
sounds of musical instruments playing the music
composed and published by the appellants, as
the copy or publication of the same within
the meaning of the act. Tho ordinary sognifi-
oation of the words 'copying', 'publishing'
etc. cannot be stretched to include it. It
is not intended that the marks upon the v/axed
cylinders can be made out by the eye or that
they can be utilized in any other way than as
parts of the mechanism of the phonograph.
Conveying no meaning then, to the eye of even
an expert musician, and wholly incapable of
use save in and as part of a machine, special¬
ly adapted to make them give up the records
v/hich they contain, these propared wax cylinders
can neither substitute the copyrighted sheets
of music, nor servo any purpose v.-hich is within
their scope. In these respects there would
seem to be no substantial difference between
them and the metal cylinders of the old and
familiar muBic box; and this, though in use
at and before the passage of the Copyright Act,
has never been regarded as infringing upon
the copyrights of authors and publishers.
ThiB peculiar use in either music box or phon¬
ograph, instead of copying the musio in the
sense of the oopyright act to the injury of
the publisher would rather seem analogous to
that of one, who havinrfpurohased the sheet
musio of the publisher ,prooeeds to perform
it continuously in public for his own prof it."
In view of the decisions to which I have called your
attention, I entertain no doubt at all but that in the United States,
a phonograph record cannot possibly by considered an infringement of
a oopyright. You will see, however, that tho decisions are all based
upon the proposition that a phonograph reoord is not to be regarded
as a "eppy',' within the meaning of the law, and the law itself is based
upon that provision of our Constitution giving Congress the power "to
promote the progress of soienoe and useful arts by securing for llmi-
I
ted times to authors and inventors, the exclusive right to their
respective writings and discoveries."
Of course, it is very probable that the law on this
subject in Mexico may be more liberal in its reoongnition of the
rights of authors than in this oountry, and if this is so, the
desicions to which I have called your attention, would have little
or no weight. If, after you have seen Mr. Sepulveda, he regards
it as impoBtant that certified copies of the foregoing decisions
should be obtained, please wire me, and I will secure the Bame,
having them properly certified for use in your oountry. In the
meantime, kindly keep me fully informed of the situation.
Yours very truly.
fld/ahk
& Co. (representatives of Victor Talking Machines) by the authors of
some of the Mexican music which was recorded hy us and also hy the
Victor Co. appears to he assuming rather seriouB proportions in view
of the fact that these authors seem determined to make good their
claims and if they are successful in winning their suit either
against Alcalde or against Schmill & Co. it will establish a pre¬
cedent which will prove very seriously detrimental to our business
in this country, in-as-much aB it is reasonable to believe that
other Mexican authors and representatives of foreign authors would
at once endeavor to collect a royalty or otherwise derive a profit
from the sale of. records reproducing their compositions,
Messrs Schmill & Co. are very ably represented in this law suit
inasmuch as they have obtained the services of one of the most
prominent lawyers, and Mr. Alcalde has also engaged a lawyer of some
prominence. However, both these lawyers appear t.o be dragging the
case along very slowly which in view of the vital interest of the
matter to us is very disconcerting indeed, . It seems that the
latest step taken by Mr. Alcalde's lawyer isto have the National
^ MEXICAN NATIONAL PHONOGRAPH CO^,
Phonograph Ca.j+t New York advised through the proper diplomatic
channels that Mr. Alcalde has been sued.
1 am not very familiar with legal proceedings of this kind, but
1 understand that this notice was forwarded by the Third Civil Judge
of this city to the Department of Poreign Relations in Washington,
and as I understand it, this step was taken merely to delay matters.
It is very probable that by this time Mr. Dyer has received
information regarding this matter, but as Mr. Alcalde spoke, of it a
few days ago I thought it would not be amis to write you on the
subject. The authors must know by this time that The national
Phonograph Co. has a branch office in this republic and the fact
that they have not taken steps to sue us directly instead of suing
only Mr. Alcalde would seem to indicate that they believe they havs
a better chance of . making good their claims against him than they
would have against us, thinking probably that he would, not be able
to go to the expense of protecting his rightB, and that we could.
In view of the fact that if Mr. Alcalde were to lose this suit
the result would be very disasterous to our interests would itnot
be well to take this matter up actively ourselves instead of letting
the matter drag along as it has been doing for the past fern months?
I am, of course, not very familiar with legal matters of this
kind, but it would appear' to me that if we engaged a competent lawyer
con
and tested this litigation ourselves as manufacturers the chances of
defeating the complainants would be a great deal better than if the
suit is allowed to drag on as it has so far.
Inasmuch as the complainants have not taken any action against
us I have endeavored not to become involved in the matter in any way
with the exception of keeping as well posted as possible by obtain¬
ing information from Mr. Alcalde and calling on his lawyer a couple'
•of times. The last time I called with Mr. • Alcalde on his lawyer,
„ MEXICAN NATIONAL PHONOGRAPH CO.
t t
the latter stated that he was very dubious, as to thB outcome of thiB
suit inasmuch as the complainants were doing their utmost to win
their case and had cited similar instances in Europe and also here
in Mexico where their contention had been sustained.
I would like very much to hear from you in regard to
this matter and really believe that some action should be taken with¬
out loss of time.
Very Truly Yours
COPY.
LEGAL DEPARTMENT.
Orange, N.J, Oot. 9,1906.
Mr, R. Cabafias,
Prolongaoion del 5 de Mayo 77,
Apartado 2117, Mexioo, D.P.,
Mexico'.
Dear Sir:-
In reference to the litigation against Mr. Alcalde, I am Just
in receipt of a letter from Mr. Gilmore, in which he approves the sug¬
gestion that Mr. Serralde be retained to represent the interest of the
National Phonograph Company. Kindly take the neoessary steps to have
this done. If there is any information that I oan give, let me
know and I will be glad to furnish the same. It ooours to me that
sinoe the question has been passed upon by the French Courts to the
extent of holding that a copyright is infringed only by the repro¬
duction of copyrighted words . the Mexioan Courts might, at least, go
no further than that. I have therefore, ordered a oortified oopy of
the French deolsion, and will send it to you as soon as received. In
Belgium, the oase waB decided squarely against the copyright, the Court
holding as in this country }' that there could be no infringement by a
phonographic reproduction. A oortified copy of the Belgian deoision
has also been ordered and will be sent you when received. In the
meantime, I will be glad if you will keep me informed as to the situation.
fld/ark
Yours very truly,
.(■Signed) prank L. DYER,
MEXICAN NATIONAL PHONOGRAPH CO.
• ' « • t
COPY.
LEGAL DEPARTMENT .
Orange, N.J. April 87,1907.
Hr. R. Cabanas,
Avenida Orients Hum 117,
Apartado 2117, Mexico D.P.
Mexico.
Dear Sir:-'
Yours of the 19th inst. is reoeived in reference to the
suit against Mr. Jorge A. Aloalde* 0f course the situation is
somewhat delicate. Mr. Alcalde is naturally anxious not to assume
any personal; • responsibility, and hence wishes to have the National
Phonograph Company substituted in his stead as defendant or associated
with him as joint defendant. The National Phonograph Company being
a foreign corporation and not doing business in Mexico oannot be
made a party to the suit unless it voluntarily consents thereto,
and I consider it important that the National Phonograph Company
should not be directly made a party to the suit, because should the
oase be lost, it might be embarrassing and complications might arise.
Naturally, the desire of the Company not to voluntarily appear as the
defendant or to submit to the jurisdiction of the Mexican Courts might
lead Mr. Alcalde to misconstrue our motives and suppose that we were
merely trying to avoid responsibility and to throw the. whole burden
upon him. You oan, however, make any oral aBBurance you Bee fit,-
either to Mr. alcalde or to his lawyer that the National Phonograph
Company will stand behind all of its records, and will defend its
• •
MEXICAN NATIONAL PHONOGRAPH CO.
No. 2 - Mr. R. Cabafias.
oustomerB in any suits brought against them for the sale of such
records either for the infringement^ of patents or copyrights: and
that the Company will pay any judgments . that may be rendered for
such infringement. This has been tho universal policy of the
Company and we have no reason to depart from it in this case.
You should suggest to Hr. Alcalde that while there are
.legal reasons why the National Phonograph Company cannot oonBent
to be made a party to the suit, we do not object to the Mexican
National Phonograph Company being made a party to the suit if he
desires to have that done. The Mexican Company does business in
Mexico and therefore may very properly be sued as the distributor
of the alleged infringing goods. ' In talking with Mr. Alcalde
' about this matter you must be sure and impress upon him the fact
that wo cannot give any guarantee of immunity, as above suggested,
unless we have oontrol of tho suit, as it would’ be obviously unwise
to make any such as suranco under any other conditions. Of course if
Mr. ■Alcalde desires to contest the case himself with his own lawyer,
we cannot promise him protection, beoause the defence might not be
handled in what we would regard as the best way. You might then say
that if he wishes us to stand behind him in all respects, you have
been requested to insist that Mr. Serralde shall have charge of the
case, because we have entire confidence in Mr. Serralde and are not
so well acquainted with his own lawyer. Possibly in this way you
may be able to straighten out the situation, but you might discuss
it with Mr. Serralde as he may have some other suggestions to offer.
to assume any responsibility, and since Mr. Serralde has already
been consulted, I think it would be unwise to make any change.''
fld/ark
Yours v ory truly.
(Signed) FRANK L, DYER
COUNSELLORS AT LAW
Patents and patent Onuses
Prank L. Dyer, Esq.,
Edison laboratory,
Orange, Hew Jersey,
Dear Hr, Dyer:-
newyork June 15, 1907.
MEXICAN COPYRIGHT LAW, A customer of the Columbia Phono¬
graph Co., in the City of Mexico, has recently been Bued by the owner-
of a Mexican copyright -for infringement of the same by selling sound-
records; and we understand this defendant will answer the suit by
-alleging that he is not the manufacturer, of the goods, but obtained them
from the Columbia Phonograph Co. We are advised by Mr. Horaoe Pettit
that a similar -suit was brought a little over a year ago by the: same
parties against a customer of the Victor Co., for selling Victor records;
that that defendant filed a plea; and that by some proceedings, under the
laws of Mexico, the Viotor Distributing & Export Co. has been made a
defendant. We anticipate the Bame steps in the suit against our cus¬
tomer, so that the Columbia Phonograph Co. may probably become A least, a
nominal defendant, though we do not know what grounds of Jurisdiction
the Mexican Courts could have over the Columbia Phonograph Co.
Mr. Pettit's clients and our clients are arranging to
assist one another in the defense of this litigation, and it ocoured-to
'us that perhaps your clients might wish to make common cause, if such
be the case will you please let me hear from you.
Yours very truly,
Juno 18, 1907
0. A. L. Massie, Esq.,
154 Nassau St., New York, N.Y.
Dear Mr, Hassle: —
Yours of the 15th Inst, is received, in
reference to the expected suit against the customer of the
Columbia Phonograph Company, in Mexico, for alleged infringe¬
ment of a Mexican copyright.
Some time in last July a similar suit was brought
against Jorge A. Alcalde of Mexico City, a customer of the
Mexican National Phonograph Company, on behalf of Messrs,
josd E. Elizondo, hula G. Jorda and Bafael Medina, alleging
ingringement hy the use and sale of phonograph recordB of cer-
tail selections from a comic opera ontitled "El Chin Chun Chan".
Mr, Alcalde promptly disavowed any responsibility in the matter,
and Btated that the reoordB had been purchased from the National
phonograph Company.. This statement was. incorrect since the
National Company does no business in Mexioo, nor has it an
office or representative in that country. The Mexican busi¬
ness is handled by a separate corporation - the Mexican National
Phonograph Company. .
— - : - r — newamti — . T JVfnnjLdfl . .
C.A.L.M--2— June 18, 1907
and told him that while we could not "be made a party to the
suit in Mexico, we would ace that he was properly protected,
and I therefore retained a prominent Mexican lawyer, L. P. A.
Seralde, to ass'iet in the defense.
Recently, the Judge of the Third Civil court of Mexico
granted letters rogatory, addrei£edi|to the Rational Phonograph
Company, giving notice of the Mexican suit, and by petition of
the Mexican Consul General in Hew York to Judge Charles H.
Truax of the Hew York Supreme Court, these were served on the
Rational Company at Hew York, on the 7th inst. Of course, as
X view the matter, this service amounts to nothing. At the
same time, of course, the Rational Company is prepared to stand
behind all of its records, although manifestly that could not
be safely done unless it should have charge or control?! of the
litigation. At the same time it seems to me that this is a
case.! where all three companies, the Rational, the Columbia
and the Victor, should stand together and make a common cause,
and I would be very glad to see you and Mr. Pettit to that end.
It would be unfortunate to have the pernicious doctrines
of the jprenoh and Italian Courts find lodgment on thiB continent,
because, as you know, the agitation in favor of the authors in
this country is proceeding along the same lineB. I would
suggest, therefore, that you arrange .with Mr. Pettit for a
conference, in order . that the matter may be discussed.
O.A.E.M.— 3— June 18, 1987
Since the suit against Mr. Alcalde seems to he going
ahead, x think we might very properly make that a test case.
mykox
Very truly yours,
H.,0. Kennedy, Esq,., ,, . . .
' Stephen Girard Building, ’•« - ' «r
I ' Philadelphia, Pft. ■ . I „..r r,.. !? . Xi .
Sly . Dear Mr, Kennedy; • . , , „
H*. Prank 7*.,J>jox\ of Orange, (attorney for the Edison Phono¬
graph. interests) , Mr. >Carap amt I (of the«Ii«gal. Department of the American
Graphophone Company and the Columbia Phbnograph Company), and Mr. ,, Johnson,
noting with ^aw law firm haying offices, in the City of Mexico, had an
Informal meeting here, at this office today regarding, the' Mexican copy* "
right situation. ' <j •. ( •■.
It is noedleos to say that you and Hr. Pettit were missed.
Of course we oould not. take any positive or radical action, hut merely
considered the situation. It is exceedingly difficult for the American
and English mind to foretell how the foreign mind land particularly a
Xatin American mind) will work} and.it .. is,, also difficult, to forecast
satisfactorily the outoome of litigation in a foreign country. W« have
all agreed that the situation is important, and of great interest to our
respective clients. The case against your Victim dealer and the case
against, the; dealer in Edison records were comae need about a year ago, and
stops have been taken 'on behalf of the plaintiff in eaoh.CRBe whioh
purport to bring ttie two American corporations under the jurisdiction of
the Mexican Courts m defendants. The suit againet, ear dealer was com-
menoed less than two months ago, and is not so #ar advanced. As ^ under¬
stood your tolephone message yesterday, you arc Represented by Mr. Jorge
H. 0. Kennedy, Esq., #8. JUly 2.$, 1907.
’ A 'j '
Vera Batanova Sanaa 8, Mexico city; Mr. Dyer’s suit la defended by
Mr. L. B. A. Seraldo , and we shall probably be represented by Messrs.
Warner, Johnson, Galpton & Wilson. Mr. Dyer suggested, and the sug¬
gestion aeons a gopd one to ua, that steps be taken, if possible, to
defend one test suit and hays the other two suits suspended ponding
the determination of the test oause, the three Companies to divide
subsequent to
equally all expenses incurred Such consolidation other than counsel
fees, and each Company to pay its own lawyers. You will understand that
this matter oannot be decided upon except by our respective clients.
But I would be glad to know informally the views of yourself and of your
client. '
Bor our people to act with intelligence, it will be necessary
to have at least an estimate, as near as may be, of the probable cost
of defending the suit through the Court of first instance | the probable
cost of appeal eto. Have you any information on this subject? We shall
make Inquiries of our Mexican attorneys.
OH-H.
Yours very truly,
(Sgd) 0. A.- L. MASSIE.
Philadelphia, July 24, 1907.
Be Mexican Copyright litigation.
C. A. L. Massie, Esq.,
154' Nassau Street,
New York City.
My dear Mr. Mas3ie:-
I duly received your favor of the 19th ihst. concerning
the interview between yourBelf, Mr. Byer and Mr. Johnson, in the above
entitled subject aid I secured my client's thoughts in the matter and
they seem to think that it is proper that we should all stand our share
of the expense. ■ I am a little uncertain, however, as to exactly what
Mr. Byer suggested as to the sharing of expense. You say that we will
only defend one test suit, and suspend the others, and "divide equals
all expenses incurred subsequent to such consolidation other than
counsel fees", I do not understand what expense you have in mind, that
is to say, whether it is only the cash outlay, for court fees, docu-
ments, evidence, etc., or whether these' expenses cover the charges by
Mexican counsel. I feel that we can co-operate and reduce the expense
as you suggest.
The suit in which we are involved is the, Second Civil
Court of the City of Mexico, entitled Elizondo, et al. vs. Schmill.
Schmill is one of our dealers in the City of Mexico. According to the
judiciary procedure in Mexico, as I understand in a case like the
present, Schmill defends himself by saying that the goods he sold were
not his manufacture and were sold to him by the Victor Bistributing aid
Export Company of New York; and then by some sort of. commission, I
suppose somewhat on the order of Letters Rogatory, the Mexican Court
sent to New York Courts and the Victor Bistributing and Export Company
submitted themselves to the jurisdiction of the Mexican Courts, we hav¬
ing no objection, but rather desiring to do this that we’ could, take
full charge of the proceeding and not have Schmill' 8 counsel interfering;
This was done over a year ago, andat my Mexican correspondent's request,
I sent him a large number of documents, copies of which I retained, and
a few weeks ago he advised me that the case was in for trial, this
advice conveying nothing to my mind as to whether it had been on trial,
or whether it had been submitted, ot what not, and a short time ago I
wrote him for more definite information which I expect to receive in tte
course of a week or ten days. X have also an estimate of his charges,
though not the cost of appeal, and in connection with the’ idea of , -
defending one test suit, I rather think it would be proper for us to
have another conference at which I could be present with my correspon¬
dence sad the defendant's documents which are before the Mexican Courts
so that we can arrive at a little more definite understanding. If you
.think this advisable, will you kindly ascertain Mr. Dyer's and Mr.
C.A.L.M., #2. July 24, 1907.
Johnson's attitude. 1 will he at your service after this week as I
am still on crutches and my physician forbids my traveling until next
week.
Yours very truly,
(Signed) Horace Pettit
. k
k/w
Mexico, February eighteen of one thousand nine hundred
iand eight. CONSIDERING the civil ordinary suit claiming the
value of the edition of reproductli-Qn of some selections taken
I from the Zarzuela " Chin Chun Chan" made by means of disc
land cylinder reoords, instituted by Mr. J.J. Elizondo on his
■own aoocunt and as representative of Messrs. Luis J.Jorda ard '
j Rafael Medina, protected and represented by the Attorney
j Mr. Miguel Lanz Durot, and against Mr. J.V.Gohmill under
patronage of Messrs. Lie, Alejandro Cuevas and Fernando Vega,
and against The Victor Distributing and Export Company, '
! representative of which is Mr. Lie. Jorge Vera Estanol, who
lie defending the case on account of having been made responsible
by Mr. Sohmill; all, these persons residing in this City with
I the exception of tho above said Company, which has its
residence in Hew York, United States of America. — FIRST
CONSIDERATION .
FIRST CONSIDERATION. The writ number six hundred and
sixty four and forwarded under the number two thousand three
(hundred and seventeen, by the third section cf Preparatory
|and Professional Instruction of the lilnistery of Justice
and Public Instruction, and addressed by this, on the
tenth day of June of Nineteen hundred and four, the Mr. Luis
0. Jorda, shows that this party ocourred to that Ministery,
i stating that he roserved for himself the rights of Artistio
Propriety which might correspond him in one edition which
has made of the musical piece named "Banohof Blackberries"
Oake V/alk(Baole del Pastel) by Abe Holzmann, and of the
! exemplar of tie Cake Walk in the Zarzuela "Chin Chun Chan"
I shown in this sentence, in whioh this musical composition
appears under the name above referred to. The aforesaid
jwrit has porfeot vale as proof on account of being authentic
iand to be included in the articles 439, second fraction. 441
and £551 of the Code of Civil Proceedings.
SECOND CONSIDERATION. By the same cause it is plainly
shown with the official letter number six hundred and sixty
j f cur addressed by the said Ministeryon the eight of February
.of the year of nineteen hundred and five, to Mr. Luis G.Jorde,
;that the same party made a declaration reserving for himself
ithe rights of artistio and literary propriety which might
correspond him in the following pieces, for piano and song.
| from the Zarzuela "Chin Chun Chan" of which he is author,
i:- number one, "Prelude y Cuarteto delos Payos"; number two,
Chanteuses y Coro" ; number three, — "Copies de los
jPoliohinelas" ; number four, "Copies del Charamuequero" :
[number f ive, "Danza" ; number eix,"El Telegrafo sinhdsloa" :
number eight, ! Final S s?
! THIRD CONSIDERATION. In the same way it is proved by the
duplicate of tho official letter, sent by said Ministery, on
the eight of June of nineteen hundred and four, addressed to
(Messrs. Rafael Medina and Jose F. Elizondo who <&ecTar.aa before
| the right authority that they reserved tforHhemselves the
jartistic and the representation rights ’wKioh might correspond
[them in the Zarzuela "Chin Chun Chan" as authors of the
written part.
j .FOURTH CONSIDERATION. From the aforesaid proofs results
!^t|™he^fSn^l0^n Elizondo, and Jorda have adquired
the two first, the literary and representation rights of the
written part of the Zarzuela"Chin Chun Chan", and "the latter
the artistio and literary righte of the pieces above referred
to for piano and song of the same zarzuela: rights which
correspond to them as authors, as they filled the requisites
,V thlB re°Pe°t points out tho article 1234 of the
Civil Code.
FIFTH CONSIDERATION . In regard to the written oart of the
said Zurzuela, the authors fulfilled with the prevention
contained in the article 1248 of the same code, in the copy
whioh was presented in this suit appears the name of said,
authors, the date of the publication nineteen hundred and four
jiand the reservation of the Copyrights, on account of having
j made the deposit whioh stipulates the law. Consequently,
j Messrs . Medina and Elizondo oan use the rights whioh flow from
| the requisites mentioned in the article Just referred to, taking
[also into consideration the contents of article 1249 of the
j same Code. ■ [ ■
j! SIXTH CONSIDERATION . In regard to the selection of the
[[zarzuela Chin Chun Chon, to whioh it refers the "Second
[.Consideration" of the. copies in which same were nublished,
and whioh are attaohed to these official documents in the
[jpart of the "author's proof" it appears that it was written
Jon each one of them, the following statement, written on the
cover, ; Depooitddo conforms a ley". Nevertheless, the party
represented by the Attorney Vera Estanol, argueB that the
selections ' authors did not otate on the cover, nor on any
other part visible of tbo oopios, "the notation on being
enjoying of the Copyrights as result of having deposited the
quantity of copies which stipulates the law", and that the
lack of this notation deprives the authors of the right to
prosecute the falsification of their work, as per the articles
1248 and 1249 of the said Code. As per the oonoept of the
Judge said requisite is fulfilled with the notation above
referred to, because, it is plain that the object of this,
could not be other than to let the public know that tie
authors are enjoying of the Copyright? since the momont that
they— announce the "deposit" in conformity with the law,
which is what substantially, compels to do the article 1848,as
it is not necessary that in the notation, be textual! y used
[the words of the law, because same does not order so, neither
it is a formula, specified by the same law. Therefore, Mr.Jords
[can use the rights which spring from said requisite.
SEVENTH CONSIDERATION • It appears announced in the catalog
A. attached to the complaint, and in the catalogue B.,
exhibited as a proof by the authors, which catalogues were
recognized by Mr. Sohmill, the following selections from
the written part of the zarzuela "Chin Chun Chan" the literary
and representation righto of which correspond to Messrs.
Medina and Elizondo:- "General Catalogue of nineteen 'hundred
and six A1 Paco Ciavilanes" First comic actor of the Principal
Theater, Mexico. 99010. Chin Chun Chan. (Medina and Elizondo.
Monologo Comioo" . -"El Champion" 3230. Medina and Elizondo.
Monologo Comico". - General Catalogue B. "Spanish Talking
Selections" A. 3230 "El Champion"^ Medina and Elizondo" Monologo
Comico, by Paoo Gavilanes, Comio -of the Principal Theater,
Mexico. - Mr. Schmill admits that he has boen dealing in this
R0pul)lic with tubea. and discs adaptable to phonographs or
talking machines, which had engraved musical and literary
selections of the zarzuela "Chin Chun Chan", and. that he has
announced the sale of discs in. printed catalogues. Reached
these proofs,; has arrived the case to examine whether the
reproduction of the above ref erred' pieces made on discs adaptable
to phonographs, or talking machines,, hurts the Propriety rig’ts "
of the authors, meaning therefore, a falsification, and ns
well aB to know if the dealing with said discs is illicit.
EIGHT CONSIDERATION, Article 1132 of the Civil Code
declares that the inhabitants of the Republic, have exclusive
right to "publich and to reproduce" as many times as they
i bel love convenient, the.. whole or „part . ofJ their. original works
by means of "Copies" made by "printing", "lithography" or
by any other "similar mean". Article 1168 of the same Code
allows the dramatic authors, besides the’ exclusive right
which they enjoy' in regard to the"publishing and reproduction"
of their works the right, also exclusive,, as to the "repre¬
sentation". From the words used by the first of said. preooptB
it is unmistable deduced, that the right allowed by the law
is to "publish and reproduce" by "copies" written by
Printing, by lithography, or by any other "similar mean"
the whole or part of one original work. Now, the reproduction
of the whole or a part of one work, made on a disc adaptable
to phonograph or talking machine, is a "copy" executed by a
-2-
similar mean to Printing ond Lithography? As a matter of
'fao5'J.,it not a "c°Py"» because it is not meant to be
read the inscription of a composition made on a diao for
tal]:Jng maohine, by reason that it is not possible to know
by mdana of the eyes, as per the judicial proof given in this
suit, the meaning of the marks engraved on the disc for a
[talking machine, neither those ^diaos are useful in any way,
except when used as a part of the mechanism of the tallcinr
machine. The talking machine is the one which takes profit
pf tho propriety of the author, and publish it reproducing the
voice of the person who roads the composition, making it
known to the public;; in this way. The impossibility to road
:the inscription mad# on a diBC adaptable to a. phonograph or
jtalking machine, evidently shows that same cannot be a copy
unless tho word "copy" is used in a very vague and
unprooise way; the discs oanr.ot be used in any way but as a
part of the meohanlsm of the phonograph. Prom these reasons we
infer that it is not possible in any way. to allege florgery in ■
;the torms especifled in the articles 1201, fraotion 1, and 1204
for reproducing on discs adaptable to . phonographs or talking-
machines, the whole or part of a literary comnosition, and &
for selling such discs in the Republic. Could* be taken
this decision as contrary to the guaranty given by the
f?u^h*artiol!iof^our Constitution, which gives all men the
right to profit the products of his work, and therefore,
whatever may be tho form by which it is reproduced the works
pf an author, there is falsification; but taking into
consideration that the law of Artistio and Literary Propriety,
gives espeolfied and limited rights, same must be given
the extriot interpretation, and tho Judge must not amplify
its preoeptc, making equitative considerations or giving a
forced interpretation to the terms of the law, which in the
?iherJ1£Uld ^ the only ono to fix the right understanding of
;tho aforesaid constitutional precept, as it is regulated
by the same article.
I CONSIDERATION. In the catalogues above referred
,to, it appears announced in the catalogue A., the following
musical compositions of Mr. Jorda: Senor J.T. Ovando y
oenoritas Perez. Teroetos con orquestn, Mexico 3260, Chin Chun
Chan( Jorda) "Coplas del Charamusquero " . 3261. Chin Chun Chan
,( Jorda) "Danza". 1883 Chin Chun Chan(Jorda) "Danza"
Senoritas Martinez. Terceto, Mexico. .Chin Ohun Ohan(Jorda)
Qavota de los Telefonos" -Guarteto Echagaray. Chin Chun Chan
^Couplets de los Poliohinelas", in the catalogue B. Piezas de
Orquesta, by the Art Pryor of Hew York, A.E43 Chin Chun Chan
^ Jorda) Cake Walk" , In regard to these compositions Er.Scbmi jbl
also agrees to have been dealing in this Republic with discs ?
adaptable to phonographs and talking machines on which some
pere engraved, and that he has advertised the sale of the
discs with suoh catalogues. Although the selections of the
zarzuela Chin Chun Chan of whioh Mr. Jorda reserved for him-
pelf the copyrights before the Ministery of Justioe and
Public Instruction are for PIANO AND SONG, and therefore, it
Ej°®8 appear proven that tho copyrights were reserved FOR
jEHE V.HOLE of the musical part of the aforesaid zarzuela, not¬
withstanding tho faot that this POINT has not been disouosed
by the contending parties, and above all the reoorded in the
discs adaptable to phonographs and talking machines corresponds
to the selections of which the oopyright is legally enjoyed
by Mr. Jorda and besides that this falsification has been
foreseen by the law, in the article 1201, fraction 9th and I06«a.
|L,q1 tenth CONSIDERATION, In regard to thSfif&fcflety, article
jjL191f fraotion 5th. of tho Civil Code . declares that tho
pusiclans have exclusive right to the "reproduction" of their
priginal works; artlole 1196 especifies that every body, who
enjoys the artistio propriety, can reproduce, or "authorize
[the reproduction" total or partial of their works, by means
of an " art" or by a "similar or dispirit" proceeding, and in
the same or different scale.
1 Comparing these dispositions with the ones that guarantee
[the literary propriety, it is immediately noted a great differ¬
ence in : the form of reproduction which guarantee the ones and
^the other precepts, as In regard to the literary rights
jthe law allows the exclusive right to reproduoe by means
Ijof "copies" in handwriting, in printing, bylithography,or
iby any other "similar mean", whereae in what respects to the
;j artistic rights the law allows the right, also exclusive,
!not only by moans of "copies", but by an"art" or by "similar?
! proceeding, or by a "distinct" proceeding, confirming this
distinction the article 1S01 of the same Oode, while defin¬
ing on fractions 1st . and 4th. the principal oases of
i falsification of the literary propriety and of the artistic
I propriety, ae in regard to the former — declares that there
| is forgery when the permission to"publish" the works,
! dissertations, less6.na| and original artioleB, mentioned in
i the Second Chapter of this book, has not been given by
legitimate owner; and in regard to the latter there is
i falsification, when same permission has not been granted to
| "publish", and to"reproduce" the artiBtic works, by "equal"
or by"distinct" proceeding from the one employed in the
| original work.
| ELEVENTH CONSIDERATION. From the terms used by the law
jin relation to the artistic propriety result that same are
not only applicable to editions properly said, produced
!by impression, or engraving, but it is understood, as per
the spirit of the law plainly manifested, that it is applicable
j to all means for publishing and for' making known the work
; which embodies the private propriety of the author; consequent¬
ly Belling the dices, cylinders and tubes for phonographs
■and talking machines, on which it was made by a particular
| proceeding, one reproduction, most useful and nearer to
■the roach of every body, of thB muoioal work, as the reproduct-.
■iion made by the Bigns of the "art"of the music can only be
; profited by persons who are acquainted with it, and to
: produce less eaminge to the legitimate author, whereas the
| reproduction made by the aforesaid mean can be useful to
; larger number of persone and in the same proportion to
S afford larger legitimate earnings which correspond to the
; author for its work, result that there is falsification,
j Examining the facts most closely, it is necessary to
, observe that the musical compositions differing from the
i literart ones, are meant most especially to be played than
j to be simply read, and for this reason it is plain that the >
ijlaw guarant ees "di s t inot ways of reproduction in ones of them
ij than in others, aD the nature and ends in view of the
!j literary works and the artistic oneB have differences so
ij profound that it would be Impossible for the ruler to leave
jl them out without being taken into consideration,
i! TWELFTH CONSIDERATION. The observation made by the
j representative of the "Victor Distributing and Export
! Co." to the effect that the inscription of the whole or a
i part of » liric-dramatic composition made on tubes, cylinders'
| or discs1! adaptable to phonographs and talking maohines, is
j made with signs which are completely different to those used
for publishing said kind of composition by means of
! pentagramio notos, has not any value, in first place because
! the law forbids the reproduction of the muoioal works not
! only by similar proceedings but by a different one, and in
j second place although; at first sight there is vacillation
! for recognizing the ..■eOngo engraved upon the disos and the
j ones written on music; paper, analyzing a little more we
realize that they lead to the same object. How is made that
engraving in a oylinder for phonograph? It is said in one of
the sentences presented by Mr. Lie Vera Estanol, ae a proof
of this case. "The defendant George" "Hosey is manufacturer
j of wax cylinders to be used on the meohanio%ipparatus known
j as phonograph. With plain knowledge of the AghtB of the
appealing parties above said, the defendant placed on said
j phonograph, wax cylinders shaved and while he made to
| revolve same placed on a metallic cone or megaphone, he
I ordered to plaoe the piece using several musio instruments
and that any person would sing the letter of the song. The9a
were received and transmitted by means of the megaphone
j to what is called recording saphire point, which han a
I shaved ohapp point and which engraves upon the revolving
'cylinders an inscription of both the musical' composition
land the written part of the song as exactly ao the megaphone
'received them. Obtaining in this way o satisfactory in-
| soription of what is called matrice inscription the defendant
[placed it on what io called double-phonograph"and immediate¬
ly underneath plaoed another wax cylinder ehaved and Bmooth.
[ The machine revolved both of them and by means of a double
[point of recording saphire, the engravingo aado upon the
! "matrioe inscription were reproduced on the smooth cylinder.
On this way the defendant has reproduced up to five thousand
copies of the matrioe inscription of the music and songB of
[the appealing parties, with the object in view to be used
[on the phonographs. He has sold r any of them and has obtained
[[fair profits out of those sales." Up to here hac been the
itext of sentence. Son, are not the engraved incoriptione the
I transcription or the translation of a music written through
([the ordinary method? The persons who played the pieces with -
i-the musical instruments and the person who sung, wore not
p guided by the written notes? Between the signs engraved on
;|the cylinders and the musical notation there are a material
I difference or difference in form, but the results are exactly
['the same.
!! THIRTEENTH CONSIDERATION. As per the reasons aforesaid
[lit io undoubtedly that there is falsification which claim the
j authors in the inscription, on disco for phonographs, of the
'[selections, of the musical part of the aarzuela"Chin Chun Chan1','
and in the commerce made with such dieoa by hr. Sohmill tak-
I ing in consideration the contents of the fraction IV of
article 1201 and 1204 of the Civil Code.
FOURTEENTH CONSIDERATION. It la argued by the "Victor
Distributing and Export co." that ao por the law in force
in the United States of America the inscriptions made on
tubes, cylinders and discs adaptable to phonograph or talking
machines, of the selections of the zarzuela"Ohin Chun Chan"
! does riot constitute falsification, and the Bale of such
' tubes, cylinders and discs neither. ThiB argument 1b proved
I by the Copyright law of said Nation, and by the .sentences
i given out by the Courts of the same Nation, preseptbaoin this
j suit, hut this only proves that the law of tho country can *
i protect the author, as there is not falsification as per the
Mexican Law in the reproduction of a work published in
Mexico odd made that reproduction abroad; but if the lav/ 1b
| impotent to protect the author further of our frontiers, it
oomes in their help, at least, forbidding tho sale of
forged works no mattor if they have been made in the Republio
or. in any other part, as per the contents of articles 1204 and-
1225 of tho Civil Code and for this reason it does not care fr
the faleifioation was made in the United States, as the only
Judicial consequence produced by thlB fact, is the one for
preventing this Court to deolare that the "Victor Distributing
and Export Company" has falsified tho mUBioal work of
! Mr. Jorda, hut same does not prevent that the law be applied
to Mr. Schmill, who has violated the dispositions of it in
prejudice of the rights of the said author, without be
necessary the examination of the Penal Law in regard to this
matter, because for the effects of this judgment it is not
needed to take In consideration whether or not he violated a
penal law, as the very dispositions of the Civil Code on
Copyright, and especially those contained in articles 1824 add
1225, define who are the responsible ones of this falsification.
FIFTHTESNTHt CONSIDERATION, The inscriptions made on tubes,
cylinders and dilcs adaptable to phonographs or talking
maohines, and the sale of such tubes, cylinder*! and dieos in
the Republio, does not constitute the dramatio representation
neither the musical representation of the zarzuela"Chin Chun
Chan", as in the termB espooified in fraction Vlll of article
1207 of the Civil Code.
SIXTEENTH CONSIDERATION. On account of not having been
jjprovod the number of disos or copies, and oh account of not
jjbeing proved thnt the reproduction of the select ions of the
l!zarzuela"Chin Chun Chan" has been made on cylinders neither
jjthat the defendant has eold same, and on account that are
ilnot also proved the damages and prejudice which have been ,
claimed, the defendant is absolved of the claim in regard!
; to these damages and prejudice and of the falsification id
!; regard to the tubes and cylinders, but as far ao the discs
jlare concerned Mr. Sohmill is condemned to pay the valuh \of
lone thousand, besides of the ones which can be confiscated
las per the contents of article 1014 of the Civil Code./r\\
!| SEVENTEENTH COK S IDERATION . Do not deeming the undersigned
j that the parties have proceeded with temerity there is not
i reason for special condemnation of expenses. For the reasSns
and legal foundations exposed and as per artiole 604 of
Civil Proceedings, our Judgment is as per the following tenss:
First. The authors proved in part their action taken in\
this suit. !
Second. It is declared that does not exist falsification
of the literary propriety and of representation' de la \
zarzuela "Chin Chun Chan" through reproductions of selections
of the same work, made on tubes or discs adaptable to ■
! phonographs and talking machines, and by the sale of same .
tubes and discs carried on in the Kepublio. ;
Third. J.V. Sohmill is obGolved from the demand
I instituted against him by Messrs. Jose Fi Elizondo and
Hafael Medina for falsification of the literary propriety and
I Of "representation" which correspond them as authors of the
j zarzuela "Chin Chun Chan" .
| Fourth. It is declared that exists falsification by the
j reproduction on discs adaptable to phonographs of the
| musical part of the zarzuela above referred to, and by the
{sale of such discs on the Kepublic.
| Fifth. J. V. Sohmill is condemned to pay to Mr.J.Jorda
the value of one thousand copies of the discs adaptable to
phonographs wherein It appear reproduced musical selections
from the zarzuela "Chin Chan Chun", and besides the value of
copies which could be confiscated.
Sixth. It is not made special condemnation for expenses.
Thus ,def init ely Judging was sentenced this suit, and signed
| by the Second Judge of the Civil Courts, Mr. Lie. Jose
j Rodriguez Oil, advising the acting party to furnish within
j twenty four hours, the seals for this suit, in the understands
! ing that shall pay ten pesos if same is not done. Gives
! falth!-
| Jose Rodriguez Gil. Carlos Garcia Jr.
(Signed) (Signed)
Legal Department Records
Phonograph - Case Files
International Graphophone Company v. Thomas A. Edison et al.
This folder contains material pertaining to the suit brought by the
International Graphophone Co. against Edison, John F. Randolph, William E.
Gilmore, the National Phonograph Co., the Edison Phonograph Works, and
the Edison Manufacturing Co. in the New Jersey Court of Chancery. The
case was initiated in January 1 905 and involved the contractual and financial
responsibilities of the Edison Phonograph Works, in which the International
Graphophone Co. possessed stock. The selected items consist of the bill
of complaint, Edison's answer, and a letter by Frank L. Dyer regarding the
progress of litigation. Among the items not selected are exhibits,
correspondence relating to the dividends of the Edison Phonograph Works,
and other material concerning the suit and the eventual receivership of the
International Graphophone Co.
TH OHAHOHRY OR HEW JERSEY,
To hie Honor WILLIAM ,T. MAGIE, Chancellor of
the State of Hew Jersey.
Humbly complaining shows unto your Honor your
orator, International Graphophone Company, a corporation
created and existing under the laws of the State of Hew
York and having its principal office in the Borough of Man¬
hattan, in the County and State of Hew York, and a stock¬
holder in the Edison Phonograph WorkB, a corporation cre¬
ated and existing under the laws of the State of Hew Jer¬
sey, hereinafter called the "Works", for and in behalf of
itself and all other stockholders in the said Works who may
come in and contribute to the expenses of this suit.
1. That your orator is a corporation created dind>
existing under the laws of the State of Hew York, and was
formed on or about the twenty-second day of August, eighteen
hundred and eighty-nine, by a certificate filed and recorde l
in the offioe of the Secretary of State of the State of
Hew York, pursuant to the provisions of an Act passed by
the Legislature of the State of Hew York Eebruary 17th,
1848, and entitled "An Act to authorise the formation of oo -■
porations for manufacturing, mining, mechanioal or chemical
purposes", and of the several actB extending and amending
the same, and that the objects for which your orator was
formed, as stated in itB said certificate of incorporation,
were and are to manufacture, aeciuire, procure, develop,
exploit, sell and use and to license others to manufacture,
develops, exploit, sell and ubb all inventions or any part
thereof relating or appertaining to the recording and re-
producing speech and rausloal or other sounds, or which are
available in connection therewith or auxiliary thereto and
other new and useful invent lone, either before ot after the
same are patented; to acquire, procure and own, American
and ioreigh patents, for said inventions; and to lease, pur¬
chase, hold, manage, disprove, develop, operate, sell, con¬
vey or exchange any and all real estate necessary and propor
for the successful transaction of the business of the Com¬
pany in the States of Hew York and Connecticut, and other
States and Territories of the United States and in all for¬
eign countries of the world, as by the said certificate of
incorporation, or a duly attested copy thereof, will, more
fully and at large appe ar, and to which your orator begs
leave to refer for greater oertainty should it be necessary
hereafter so to do.
2. That your orator, pursuant to the powers and
privileges conferred upon it by law and by the said Acts
of the Legislature of the State of Hew York has acquired in
the manner hereinafter more particularly set forth, and now
owns and holds one thousand four hundred and forty shares o:’
the capital stock of the said Works of the par value of
one hundred dollars each, and that the said sJiares stand
in the name of your orator on the books of the said Works,,
and have so stood since in or about the month of March, One
thousand wight hundred and ninety.
3. That in or about, the year eighteen hundred and
seventy-eight, Thomas Alva Bdison- invented certain machines
capable' of recording anfl repmjduc.ihg s ounds, known as phono -
graphs, and also certain appliances and devices to be used
In connection therewith, and secured letters patent of the
United States and foreign countries covering each of the
aaid inventions .
4. That afterwards and on or abuut the eighth
day of October, eighteen hundred and eighty-seven, the aaid
Edison caused and procired a corporation to he formed under--
the laws of the State of Hew Jersey by the name of the
Edison Phonograph Company, which aaid corporation was
formed by the filing of a certificate of incorporation in
the office of the Secretary of State of Hw Jersey/on the
said last mentioned day, under and by virtue of the. pro¬
visions of an act of the Legislature of the State of Hew
Jersey entitled "An Act concerning corporations", approved
April 7, 1875, and the several supplements thereto, with
the powera in the said certificate mentioned, that is to
say: To manufacture and sell phonographs and apparatus and
devices embodying the same: to purcliase and own letters
patent, anA to grant rights and licenses thereunder; to
buy lands and to erect thereon buildings and machinery for
the purposes of such manufacture, and to issue bonds se¬
cured by mortgage upon the property and franchises of the
said company; that the authorised oapital stock of the said
ooropany as fixed by the said certificate of incorporation
was one million two hundred thousand dollars divided into
12,000 shares of the par value of one hundred dollars each;
that the names and residences of the stockholders named in
and who exeouted the said certificate,-, Sand the number of
Bhares subscribed by each arc as follows:;;, Thomas
-3- , |
A. Edison 11,960 stores, Alfred 0. Tate 10 shares1, John
C. Tomilson 10 shares; Esra T. Gilliland 10 shares; Samuel
Inaull 10 shares; to which said certificate of inoorpor-
ation, or the record, or a certified oopy thereof, your
orator hags leave to refer for greater certainty should
it he necessary hereafter sotto do. And your orator shows
and charges the fact to he tliat the said Tate, Toralison,
Gilliland and Insull were in the incorporation of the said
coinpany aoting as the representatives and agents of the sill
Edison and wholly under liis direction and control, and withjut.
any personal or financial Interest in the said company, and
that the said company was formed hy the said Edison for the
sole and exclusive purpose of entering into and performing
the several covenants and agreements thereafter entered
into hy it, as hereinafter more particularly set forth.
| 5, That afterwards and un or about the twenty-
eighth day of October, Eighteen hundred and eighty-seven,
the said Edison opuaed an agreement to he entered into
between Mmsalf and the said Edison Phonograph Company hy
whioh in consideration of tho issuing to him of all or
nearly all of the oapital stock of the said oaapany, he
agreed to and thereby did transfer, assign and sot over
unto the said company all of Ms said letters patent which
had been issued in the United States of Arnsrlca and in the
dominion of Canada, and Ms existing applications for
letters patent in the said countries for, inventions and
improvements in phonographs mid other sound reproducing
machines, and the extensions of the said letters patent
thereafter granted in the said countries, and did further
agree to equip and furnish a factory suitable for the manu-
-4-
facture of phonographs anil the supplies necessary therefor
and capable of s implying the demands of tlie said Edison
Phonograph Company, and to manufacture and to sell such phono¬
graphs to the said Edison Phonograph Company upon certain
terras and conditions in the b aid agreement mentioned, and by
which the said Edison Phonograph Cora)' any granted to the 3ai<.
Edison the exclusive right, authority and lioenses to manu¬
facture the various Inventions covered by the said letters
patent and applications therefor, then owned or to be there¬
after owned by the said company, and that on or about the os, id*,
last mentioned day the said Edison also entered into an agree¬
ment with one George Edward Gourand, of London, England,
by which the said Gouraud agreed to purchase from the said
Edison all phonographs and the supplies necessary therefor
required for use in foreign countries, upon oertain terms
and conditions therein mentioned, and tho said Edison agreed
that one -half of the output of any faotory established hy
him in the ’Silted States for the manufacture of phonographs
and supplies should be at tho disposal of the said Gouraud,
6. That afterwards, and on or about the
third day of Kay, eighteen hundred and eighty-eight, the
said Edison oaused and procured a oorporajtion to be formed
under the laws of the State of New Jersey, by the name of
Edison Phonograph Nprks, which said corporation was formed >y
the filing of a certificate of Incorporation in the offioe
-5-
of the Secretary of State of Hie State of New Jersey on the
said last mentioned day, under and by virtue of the pro¬
visions of m Act of the Legislature of the State of New
Jersey entitled "An Act concerning corporations"-, approved
April 7, 1875, and the several supplements thereto and
acts amendatory thereof, with the powers in the said cer¬
tificate mentioned, that is to say': to manufacture phono¬
graphs and the various apparatus and devices connected
therewith and to sell the same, and to manufacture and sell
various other machines, apparatus, devices and things; to
buy lands, and to erect thereon buildings and machinery for
the purpose of ouch manufacture; to issue bonds secured
by a mortgage or mortg*igos upon the property and franchises
of the said Company, and to sell the same for the puspose
of raising money with which to build, purchase and erect
factories, machinery, &o.; that the said Company was formed
with an authorised capital stock of t hree hundred thousand
dollars, divided into three thousand s)iares of t he par value
of one hundred dollars oaoh, and tliat the names and resi¬
dences of the stockholders mimed in and who exoouted the
said certificate, and the number of shares subscribed by
each, are as follows: Thomas A, Edison, one thousand five
hundred and sixty shares; Charles Batohelor, five shares;
John 0, Tomlinson, five shares; and Alfred 0. Tate, Trus¬
tee, one thousand four hundred arid fifty shares, making in
all the full authorised capital stock of the said Company,-
to which said certificate of Incorporation,' or the reoord
-6-
oi* a certified copy thereof, your orator 'begs leave to
refer for greater certainty Hhould it be necessary here¬
after* so to do. And your orator shows and charges the
fact to he that the said Batoheler, Tomlinson and Tate wei
the incorporation of the said Works acting as the repress!
tivea and agents of Uie said Edison, and wholly under Wta
direction and control, and were without any personal or
financial interest in the said Works.
7. That, afterwards, and on or about the
twelfth day of May, Eighteen hundred and eighty-eight, a
certain agreement in writing was by the procurement of the
said Edison and by virtue of his control of the directors
and a tookh ciders of the said WorkHriftade between the said
Edison and the said Works, in and by which after reciting
the said agreement between the said Edison and the said
Edison Phonograph Company and the said agreement between
the said Edison and the said Ooiimud, and that the said
Works had been organised to undertake the manufacture of
phonographs and supplies required by the said Edison Phono¬
graph Company and the said (Jauraud, and was willing
and desirous of assuming the obligations of the said Edisor
under the said agreements between him and tire said Edison
Phonograph Company and between hire and the said Gouraud, ss
far as the manufacture of phonographs and supplies for do¬
mestic and foreign i:
> concerned, dhe said Edison
agreed to give and did thereby give to the said Works the
exclusive right, authority and lioense under each and aver
the letters patent and applications ^tlierejCor under
which a license has been granted to him by the aula Kdisan
Phonograph Oomrany, pure want to the provisions of the said
agreement made between them on the twenty-eighth day of
October, Eighteen hundred and e jghty-scvan, to manufacture
the inyentiona therein severally described, and agreed that
he would give and grant to the a aid Works a srfahilar
license under each and every the totters patent upon
inventions under which ho might receive or bo entitled
to receive a license to manufacture pursuant to the said
last mentioned agreement, and Aid further agree to give,
and he thereby did give, to the said Works the exclusive
right, authority and license to manufacture phonographs
and the supplies necessary therefor for export and use in
foreign oountria, it being therein recited to be the
intention to confer upon the sold Works the same right and
license under the patents owned or to be owned by the said
"Edison Phonograph Company as were conferred by the said
last mentioned cong)any upon the said Edison, and the 3ame
right to manufacture phonographs and supplies for export anc
use in foreign countries as were conferred upon the said Kdl
son by the contract between him and the said Gouraud herein¬
before referred to, and the said Works did thereby on its
part agree with the said Edison that it would forthwith
equip and erect a factory suitable for the manufacture of
phonographs and the supplies necessary therefor and capable
of supplying the demands of the said Mipen Phonograph Com¬
pany, and that it would promptly meet and fill all the
•0-
orders of the said company and would deliver to it or to
such xwrsons a 8 it wight direct, for sale within the
United States of America and the dominion of Canada, all
phonographs and supplies so ordered at the actual cost of
manufacture thereof plus twenty per cent, of such co3t, the
oOBt of manufacture being defined to include cost of labor,
material and general expense; tliat it would .not sell said
phonographs and supplies so to be lounu&foturad for domestic
consumption to persons other than the said Edison Ehono-
graph Cornpany save by its direction and with its consent;
that the factory so to be established by it should be of a
capacity sufficient not only to meet the demands of the
said Edison Phonograph Company, but also to supply the
orders of the said Gouraud for this foneign market, and that
it would promptly supply all the orders of the said Gouraud
or
and would deliver to himAsuch persons as lie might direct,
the said phonographs and supplies at the actual cost of
manufacture plus twenty per pent thereof, 'the cost of
manufacture to inoltide labor, material and general expense;
that if required by the said Gouraud one-half of the
entire output of the said factory should :be subject to the
order of the said Gouraud, and that no phonographs or
supplies should be sold by the said faet<Mjy for foreign
use save to the said Gouraud, or such perhonB as he
might designate. That in and by the said agreement
th8 sdid Works did further agree with the said Edison to,
transfer, assign and deliver to him,, his heirs, executors,
administrators and assign?^ £if ty-£wo per cent, of its
-9-
entire oapital stook as and when the sane night he issued h;r
it, that is to say, for every four and eight-tenths shares
of its capital stook sold or issued for property hy the
said Works as and when the same was sold or issued it would
transfer, assign and deliver to the said Edison, his heirs,
executors, administrators and assigns, five and two- tenths
shares of its capital stock until the then present capi¬
tal of three hundred thousand dollars had been entirely
in case
issued; and that^at any tine within twenty-five years
from the date of the said agreement, and for any pur¬
pose, it should increase its then present capital of
' ^
three hundred thousand dollars It would transfer, assign,
and deliver unto the said Edison, his heirs, executors,
administrators and assigns, fifty- two per cent of each
and every such increase. That the sdid Edison thereby
agreed for himself, his heirs, executors, administrators
and assigns, that of the stock issued and delivered to
him or them pursuant to the provisions of the said contract
he or they would immediately upon its receipt transfer and
assign thirty-eight per cent, of the stook so issued
and delivered to him or them to a trustee to be agreed upor
between him abd the said Works, upon the following trusts
and conditions, that is to say,:
"1. That said stock so delivered to the
trustee shall not participate in any of the earnings of
the party of the seoond part (being the said Works) nor
be entitled to share in any dividends , It, however, the
earnings of the Company which it decides to declare as
-10-
dividends in any one year amount to over twenty-five
per cent. (25$) on its entire stock exclusive of auoh
stock so held in trust as aforesaid, then auch trust stock
shall be entitled to participate ratably with the other
stock in such excess; and
2. That the party of the first part (being the
said Edison), hia heirs, exeeutorB , administrators and
assigns, shall have the exclusive right to vote jtpon the
stock so held in trust at all meetings of the Company, and e
proxy shall be given him or them for such purpose; and
3, That in case the company ia dissolved or
should go into liquidation such trust stock shall not be
entitled to participate or sliare in the property or assets
of the Company;" to which said agreement your orator prays
leave to refer for greater certainty should it be necessary
hereafter so to do,
8. That shortly after the making of the
said last mentioned agreement, and pursuant to the terms
thereof, the said Works did issue to the said Edison One
thousand five hundred and sixty shares of its oapital
stock, being fifty-two per cent, of the entire amount of
its then authorised capital stock; that thereafter and
on or about the tenth day of March, in the year Eighteen
hundred and ninety, the said Edison Phonograph Wotks
duly increased its authorised oapital stock from the sum
of three hundred thousand dollars to the sum of six
hundred thousand dollars, and thereupon issued to the said
-11-
Edison one thoustmd five hundred and sixty additional
shares of its stock, being fifty-two per oent . of the
said increase in its said capital stock} that upon the
issuing to the said Edison of the one thousand five hundred
and sixty shares of the capital stock of the said Works first
above mentioned, the said Edison Aid deposit five hundred
and ninety two and eight tenths of said Bhares, beine
thirty-eight per cent, thereof, with the Manhattan Trust
Company of New York, as a Trustee selected by him and the
said Works upon the trusts in the said last mentioned
agreement set forth, and thereupon received and held,
and still holdss pursuant to the said agreement, proxies,
to vote the ssaid shares of stock at the annual meetings
of the stockholders of the a old Works, and that upon the
issuing to the said Edison of the one thousand five hundred
and sixty shares of the capital stook of the said Works
secondly above mentioned, the said Edison did deposit
five hundred and ninety-two and eight tenths of said
shares being thirty-eight per cent, thereof, with the said
Trust Company as Trustee as aforesaid, and thereupon receivsd
and held and still holds pursuant to the said agreement
proxies to vote the said shares of stook as aforesaid, and
that by virtue of the e aid proxies and of the ownership
by the said Edison of the remaining one thousand nine
hundred and thirty-four and four tenths Bhares of the three
thousand one hundred and twenty shares of the said Works
so is sued. to him as aforesaid, the said Edison controls,
and has over since the month of March, eighteen hundred anc
ninety, controlled, 'the selection and election of the
-12-
offioers and directors of the said Works , and has
controlled, directed and managed all of its business and
affairs. And your orator further shows and charges the
fact to be that all of the acts and doings of the said Works
hereinbefore and hereinafter referred to, have been at the
procurement and under the sole direction and control of the
said Edl a an.
9. That on or dbtfut j^the twenty-sixth day of
February, eighteen hundred and ninety, the said Mis an
and your orator caused and procured a corporation to be
formed under the laws of the State of Hew Jersey by the
name of Mis on United Phonograph Coripany, v/ith an authorized
capital stock of §1,000,000 divided into ten thousand
shares of the par value of one hundred dollars each, which
corporation was formed by the filing of a certificate
of incorporation in the office of the Secretary of State
of the State of Hew Jersey on the said last mentioned
day under and by virtue of the provis ions of a,n Act
of the legislature of idle State of Hew Jersey entitled
"An Act concerning corporations", approved April 7, 1875,
and the several amendments supplemental thereto and acts
amendatory thereof, for the purposes therein mentioned,
that is to say,- (1) To manufacture, buy, sell, rent,
lease and otherwise acquire, use and cause to be used,
also to hold and in any way dispose of phonographs,
phonograph-graphophones, grapho phone b , and all articles
. . >s. .
and instnunents and machines of any po ther kind or
description whatsoever used or capable of being used or
intended to be used for the recording .and reproducing of
-13-
sounds, and any or either of them or any part thereof, and
any and all material, art iclae, contrivances, appliances,
and things now or hereafter used or required in tins Manu¬
facture, use or operation of the same; (2) so far as way he
necessary for the business of the Company and as the Company
may be allowed try contract and by law to do, to Manufacture
purchase, own, sell and use, and to license others to
manufacture, sell and use patents , patent rights, inven¬
tions, processes and mechanical contrivances and appli¬
ances relating to the manufacture, use or operation
of said phonographs and other Instruments of the character
above described; (3) so far as my be desirable and
necessary for the business of the Company and the law may
allow, to soil, grant and assign the aforesaid patents,
patent rights, inventions, processes and contrivances
relating to the manufacture, use or operation of the said
phonographs and other instruments above described or
any of then; (4) so far as rauy be allowed by contract
and by law, to purchase or lease manufactories and other
property for the business of the said Company; (5) so far
as it may legally be done, to buy, own, sell and otherwise
dispose of shares in the capital stock of any corporation
engaged in the business of manufacturing, making, using or
sailin'; phonographs and other Instruments of the character
above described, or using or dealing in materials,
applianoea, instruments or machines dealt in by' the
Company, in connection with its said business; (6) also so
far as the s erne may be illegally be done, to acquire, hold ard
convey in the State of Hew .Torsey arid in : the State of Hew
York and elsewhere ei ther within the United States of Amsr: -
ca or in other parts of the world, Bhbuld the business of
j the a aid Company require it, such real estate aa ahall toe
neoessaryfor the convenient transaction of its said business,
and to invest the funds of Oie Company in tlie stocks, bcnda
or securities of other corporations or companies owning lanch
situated in thia State or in any of the other atatea com¬
prising the United States of America or, in any other coun¬
tries in the world, and to mortgage any part of ita real
or personal estate and to issue bonds therefor as provided
toy law; (7) to do o»oh and every lawful aojr incidental
I to ita said business as may be allov/ed toy law, and to exer¬
cise all the posers granted toy the laws of this State to
corporations whether the aaino toe expressed ot implied, to
which said certificate of Incorporation, or the record, or
a certified copy thereof, yotir orator begs leave to refer
should it toe naoeasary liersaftsr so to do.
10. That the said Edison United phonograph
Company was formed for the purpose of vesting in the said
Company all of the letters patent theretofore issued to the
said Edison or then or thereafter to toe applied for toy him,
in countries save the United States of America and the
Dominion of Canada, for inventions relating to phonographs
and improvements therein and supplies necessary therefor, aid
also the right, title and interest of your orator in and to
certain letters patent and applications therefor for in¬
ventions of and improvements in sound producing machines tanwn.
as graphophones and phonograph-grupho plumes ' issued in
foreign countries, which were of large value, and that the
four agreements next hereinafter set out were entered into
Isimultane ously in furtherance of the said; purpose, and for
the further purpose of conferring upon the said Works the
-15-
right and license to manufacture all of the phonograjihs,
graphophones, phonograph-graphophones, davicaa and supplies
covered by the said letters latent, applications and Inven¬
tions.
. 11, That afterwards and on or about the
eleventh day of March, eighteen lundred and ninety, an
agreement In writing wan nade between the said Edison and
the sold Edison United Phonograph Company, bearing data the
day and year last afore oh Id, wherein, after reciting
that the sold Edition was the Inventor of v/hat was generally
known as the phonograph, which invention is more particularly
described in Letters Patent of the United Staten Ho. 200, 52!. ,
dated February 19, lO'tS , for an "Xnprovement in Phonographs
or Speaking Ma chines", and upon and including which in¬
vention, letters patent of various countries had bean
granted to him, and that applications for other latte ro
patent therefor had been made, and that the sold Edison
United Phonograph Company was a corporation organised
for thempurpese of exploiting the introduction and use of
phonographs, grapho phones and speaking machines, and
drained to acquire from the a aid Edison Mb said certain
letters patent and inventions in all the countries of the
world save and except the United States of America and
th» Dominion of Canada, and also proposed to acquire certain
other inventions and letters patent relating to graphophone 3
phonograph-graphophoneB and other kinds of speaking
machines, it was among other things provided that the said
Edison, in consideration of being given five thousand shares
of the capital stock of the said Edison United Phonograph |
Company, thereby agreed to and did transfer, assign and oat
over uni© the said last mentioned Company hia entire right,
title and interest in and to tlw a .aid existing letters
patent and axis bin; applications .tor letters patent and
in all extents?, ona of the same thereafter granted, in
each and ev^ry o wintry of the entire world nave and
axoopt the United States of America and the Dominion of
Canada, upon his aforesaid inventions and improvements
relating to phonographs or speaking machines, it being,
however, distinctly understood and agreed that the said
inventions, iisprovemi'nts, letters patent and applications
were restricted to phonogrdpJis or other speaking machines,
and to phonograph supplies and- appliances especially
invented or created to ?>a used with phonographs or other
speaking machines, hut not including batteries, battery
cords, tables, cabinets and other similar articles ap¬
pertaining to or used in connection with phonographs,
or other ape '-king loaoftinea , and commonly sold in the
opon market, and also not including the right to use any
of said inventions and improvements in or in connection with
dolls, toys, toy figures and clocks, the right to use
the B*aa6 in or in connection with dolls, toys, toy figures
and clockfl, being osleo. tally excluded from the said assign¬
ment and agreement. That in and by the said agreement it
was further provided that it being the intention of the
parties thereto that the a aid Company Should grant to the
said Edison, upon certain terms and conditions, the sole ani
exclusive right to manufacture for it and its licensees
and assignees, under all of the letters patent or rights
which it then owned or controlled, or at any time thereafter
-17-
might cm or control, relating to the said Inventions
or improvement a, and the said Edison having theretofore
requested, the said Company to « wisent that the aforesaid
right to manufacture should '» given to a certain oorporat.it n
to wit, the said Works, and the said Company being willing
to accede to the aforesaid request of the a aid Edison
it was agreed that simultaneously with the execution
of the said agreement, a certain license agreement to
manufacture should be entered into by and between the
said Company and the a aid Works, a copy of which said
proposed license agreement was annexed to the said last
mentioned agreement, to which said agreement, and the
annexed
schedules and -SKhibi to ^thereto, your orator prays,
leave to refer for greater certainty should it be necessary
hereafter so to do.
12. That on or about the acid eleventh day of
March, eighteen hundred and ninety, sin agreement in writing
was made between your orator and the said Edison United
Phonograph Company bearing date on that day, wherein it
was recited, as the fact was, that jour orator hud oardlrtin
right, title and interest in and to certain letters patent
granted in foreign countries for certain. inventions relating
to graph qph ones, phonographs and speaking- machines, and
their attachments and appurtenance s , and. that the said
Edison United Phonograph Company was a corporation organised
for the purpose of exploiting the introduction and use of
phonographs, graphophones and speaking machines,- and
d” sired to acquire from your orator all its right, title
-18-
and interest in and to the said letters patent ami invent! or s
and applications therefor therein mentioned, in all the
countries of the world, and that in and by 'the said agree¬
ment between your orator and the said Edison United
Phonograph Company your orator :ln consideration of heinc
g iven five thousand shares of the capital stock of the
said Company (the same being given and accepted as fully
paid and unasae s sable ) , thereby agreed to and did transfer
aasign and set over unto the said Company its entire right,
title and interest in, to, under and by reason of the
said letters patent and inventions and applications therefor
therein mentioned. That in and by the said agreement
it was furthar, among other things, provided as follows:
•'The second party (being the said Edison
United Phonograph Company) having acquired aimultaneously
with the execution of tills agreement certain right, title
and interest in certain letters patent, granted in certain
foreign countries for inventions of Thomas Alva Edison
such rights having been acquired by reason of an agreement
bA tween the said Thoms Aid Edison and the said second
patty of even date herewith, and it being believed to be
for the interest of the parties hereto and of the said
Edison that the second party hereto should grant to the
Edison Phonograph Works, a corporation organized and
existing under the laws of the State of New Jersey, a
oartain license agreement to manufacture phonographs and
graphophones and other articles, it is agreed that si-
-19-
jaultaneously v/ith the execution of thin agreement, a
certain license agreement to manufacture shall bo entered
into by and between the*, second party hereto and the s aid
Edison Phonograph Works, whereby the said Edison Phonograph
Works shall assume and agree to do and perform each and
every thing that my be neoeusary to be done and performed
in order to maintain the right, title and interest of the -
second party herein" to Hie said letters patent and
inventions and eftiplltfationa therefor therein Mentioned, a
c opy of which said proposed license agreexoent was annexed
to the said last mentioned agreement, .which said agreement,
with the schedules and exhibits there toaruiexed, is in
the possession of your orator ready to be produced and
proved when and where this Court may direct, and to which
your orator begs leave to refer for greater certainty
should it be necessary gereaf ter so to do »
13, That on or about the said eleventh day of
Jiai'oh, eighteen hundred and ninety , a certain ajsreemont in
writing (being the lioenae agreouwnt referred to and pro¬
vided for in the two last Mentioned agreements ) was entered
into by and between the a aid Edison United Phonograph Com¬
pany as party of the first part, and the said. wrirks -as
party of the second part, in which, after reciting as folio? a
"Whereas, the first party is engaged in the bus¬
iness of promoting the introduction and use of sneaking
machines, including phonographs, graphs phones , and phono-
graph-graphophonca , and in connection with the said busi¬
ness has acquired rights under certain agreements relating
to patent rights and franchises in certain parts of the
v/orld, entered into by and ba tween it and other parties,
among which ogreeisonta ar» the following, to wit: Two
agreements roads dn the same date as the execution of this
agreement, one between Thoms Alva Edison and the first
party hereto, and the other between the International
Graphophone Company and the first party hereto, reference?
to both of which agreements As now made for greater part ion ■
larity; and
"Whe roas , the first party expects to own or ac--
quire in the future, either An whole or In part , certain
other patents or equivalent rights relating to speaking
machines as aforesaid. An the different countries of the
world; and
"Whereas, the first party proposes by this agr >e
-81- ,
went ot grant to the seonild party an exolusive license to
manufacture in every country of the world, bo far as it
may legally have the po'-'er to grant such rights, all In¬
ventions and improvements '-elating to phonographs or other
speaking machines as aforesaid, and relating to devices,
supplies and appliances of all kinds c cimected with the
same or with the manufacture thereof, which the first
party has heretofore acquired or my hereafter acquire in
any and all countries of the world, hut such manufacture
to be for the sole use and benefit of the first party and
ita assigns and authorised licensees or agents", it who
among other things provided as follows :
"kirst,- The first party hereby sgrees to grant
and heweby does grant to the second party the sole and
exclusive right in all parts of the world, including the
United States and the Dominion of Canada and all other
countries, to manufacture for it, and upon its order, for
its assigns, agents and licensees, but for no one else,
all inventions and improvements appertaining to phonograph:
graphophones, phonognvph-graphophonas and speaking
machines of every kind and all supplies and appliances
especially invented or created to b? used vrith/phenographs,
graphophones or other speaking machines (but not including
batteries, battery oordsr tables, cabinets , and other sim¬
ilar articles appertaining to or used with speaking machines
qud commonly sold in the open market), described in or
covered by the agreements and petants referred to in the
above recites hereof, .'or described in or covered by any
i
other present or Suture agreements, inventions or patents
franchises, privileges or governmental good-will, or the
equivalents thereof, and relating to aforesaid inventions
and improvements first above name do in this section, which
the first party may now or hereafter make, ao quire, or bp
licensed under, or become interested in, in any part of
the world."
"Second,- The second party agrees to manufacture
to the extent herein provided for, the aforesaid phonographs
machines and the separate parts thereof, and the said sup¬
plies and apparatus described in and ooverdd by said
patentB and agreements, and to deliver the same to the
first party, or its order, wherever manufactured, at the
estimated actual cost of manufacture plus twenty per oentun
thereof, the said cost of manufacture to include cost of
labor, material and general oxpense, not including rent or
interest or depreciation, except that at the end of each
oalendar year there shall be paid on aooount of deprecia¬
tion an amount equal to five per cent, of the value of the
machinery used in the manufacture of said maohiBeB, parts
devices and apparatus, but only a proportionate amount to
be paid for a, part of a year. Such royalties for the use
of patents as the second party may be . compelled to pay anc,
the first party may eleot. to have the second party use,
shall also be included in general expens, e.H
"Fifth,- The detent to. Y/hioh the manufacture of
articles covered by this agreement is to be carried on,
shall be regulated by the requirements of the first party,
-83-
as indicated by its firm orders, subject, however, to the
following restrictions, that is to says Within one oalen-
dar raohth from the time when the second party shall give
written notioe to the first party of the particular kinf or
<
type of phonograph or other speaking machine it has de¬
termined on as above/provided for (and the seoond/party
agrees that it will detenaino on such machine within not
less than one month from the date of this instrument), the
firat party shall give to the second party its f inn order
for the -to livery of ten (10) complete machines per diem,
exclusive of Sundays and legal holidays, the said order to
continue in force for a period of not lesB than three months
from the date of the beginning of delivery thereunder, such
delivery to begin as soonas the second party is ready to,
deliver, but not later than sixty days from the receipt
by the second party of such order, if the first party so
insists. "
"Should the first party desire either to increase
or diminish the aforesaid daily amount of output, to take
effect after the expiration of the said three months it
shall serve written notice upon the said party at least
six weeks before the date when such increase or diminishing
of output is to take effects and should the first party
desire at any time or tiroes thereafter to again regulate
the amount of the daily output, written notioe thereof
similar to the notioe provided for above, shall be served
upon the second party, which shall take effect six weeks
after the receipt thereof, the sedond party agreeing at
any time after the expiration of the first period of three
mentioned above, to increase or diminish the said
daily output, to 'the extent of at lease ten (10) per diem,
after the aspiration of six weeks from the date of the re-
oeipt of any of the said written notices."
"Tenth,- ,T}ie second party hereto reserves the
right and option to oar it on the said Manufacture in the
United States and in suoh other countries and to such
extent in exich several countries as it may from tine to
time deem desirable, it being understood that the second
party shall as reg ards all Manufacturing in all o ountries
o amply in all respects with the laws of those countries.
As regards any countries whose laws wake it necessary to
therein
carry on^the manufacture of the articles herein provided
for, the second party agrees to establish factories in
all such countries, to conform t:o the rvuiuirarients of the
laws thereof, and sufficient, so far as necessary, to supply
the trade therein in such substantial manner as is pro¬
vided for by 'Shis agreement, and in case of any dispute on
this point it shall be left to arbitration, as provided
for below in the thirteenth section,"
"Save and except as above provided for, the first
party will not during the continuance of this agreement,
license or authorise any other party whatsoever to manu¬
facture any of the articles herein provided for in any pari
of the world, it being Vaa intention of this instrment
that to the second party hereto shall belong the sole and
exclusive right,' provolsgs,' good-will and license, to man¬
ufacture phonographs, graphoyhonas and other speaking
-SB-
machines, and all supplies and appliances eapeoially in¬
vented or created to be used with phonographs or other
bp caking machines, hut not including batteries, battery
cordu, tables, cabinets and other similar articles apper¬
taining or used in connection with speaking machines and
commonly sold in the open Market.”
"Twelfth,- The oedena party hereby assies, und
agrees to do and perform, so far so it can legally do so,
each and every thing whioh the first party assumed and
agreed to perform in its certain agreement with the Inter¬
national Orapho phone Company, dated March 11th, 18S0 ( a
oopy ol' said -agreement being hereto annexed entitled "Copy
of International Co. Agreement 1 , and marked Exhibit 0.)"
to whioh said agreement when the same shall be produced and
proved your orator begs leavo to refer for greater certainty
should it hereafter be necessary so to do.
14. That on or about the said eleventh day of
March, eighteen hundred and ninety, Rn agreement in writing
bearing date on said day was made between the si id Edison
and your orator, in and by which said agreement it was
recited that the parties thereto were interested in the
promotion and success of a certain corporation then being
formed known as the Edison United Phonograph Company, and
were also interested in a certain other corporation known
as the Edison Phonograph Works, which corporation was re-
olted to be closely Identified with the interests of the
said Edison United Phonograph Company, and that the said
parties desired to enter into certain arrangements and
agreements for the management of the business affairs of
the aforesaid two corporations for their ovm mutual benefit
as well as for the benefit of all present and future share-
holders therein, and -that after the making of the said ro-
oitals it was in and by the (laid agreement by the part lea
thereto, among other things, agreed as follows, that is, to
say: That so far as they had or might thereafter have the
legal right and power to do ho, the board of direotora of
the said Works should always consist of five members, three
of which should beselected by the a dd Edison and two of
which should be so looted by your orator, and that so far
an they could legally do so, the parties to the said agree¬
ment would always east their votes as stockholders in the
said Works in favor of the five directors to be selected
&b aforesaid; t)mt as regards the then present board of
diosc tors of the said Works the said Edison agreed that ho
would exert his best offarts to procure the immediate
resignation of two of the number thereof, and to have
ohonen in their place two members who should be Beleoted
by your orator, and that as regards the selection of di¬
rectors for the said Works, the said agreement should con¬
tinue no long as both of the parties thus re to should sever¬
ally own at least one-fifth of the nominal capital stock
thereof, and that should either of the parties thereto
oease to own at least one-fifth of the capital Btook of
either of the corporations as aforesaid the said agreement
should thereupon cease so far as it related to either or
both of the s id corporations; as the case might be* which
said agreement in writing wan executed in two parts, one of
which in in the possession of your orator, ready to be pro¬
duced and proved when and where this Honorable Court way
direct, and to which your prator bega leave to refer for
greater certainty should it. be necessary hereafter so to do
-av_
18 . And jp ur orator further oho we and charges
the fact to he that the said last mentioned agreements
was a valuable and substantial cons Ida rati oh to your
orator for its entering Into the said (agreements with the
osid Works and the said Edison United Phonograph Company,
more particularly hereinbefore set forth, and for the trans¬
fer by it to the said Edison United Bhongraph Company of
its right, title and interest in and to the letter:) patent
and inventions end ^plications therefor in the s aid
agreements mentioned and described, and was in effect a
part thereof, and that your orator would not have entered
into the said agreements had it not boon for the making
of the said agreement between you)' orator and the. said
Edison and your orator’s belief that the :idid Edison would
in good faith perform and oause to be performed the terms
thereof.
16. That simultaneously with the making of the
said gour agreements last above set forth, your orator sub¬
scribed and paid for and received, the fourteen hundred
and forty shares of the capital stock of the said Works of
the par value of one hundred and forty-four thousand dol¬
lars, so held and owned by it as aforasaidm and shows and
charges the fact to be that said subscription to and payment
for the said stock was secured by the promise of the said
Edison to enter into the agreement last above set out
and to faithfully perform the HKirae,* and that your orator
would not have subscribed for dr paid for the said stock if
the said agreement had not been made and your orator hud
not believed that the said Edison would in good faith per-
and omiM to b* performed the term thereof.
17. That in or about tha year 1854 the said
Edison sold all of his dliarao of a took in the said Edison
United Phonograph Company, and einoa 'that time hod had no
interest whatever in the said company.
18. TJiat in or about tha year nineteen hundred
and eighty-eight the said Works purchased a large tract of
land in the City of Orange , in the County of Essex find State
of >Tow .Jersey, find erected thereon large factories and equij*
pad the some with machinery necessary for the manufacture oi
phonographs and graphophones and the devices and supplies
connected therewith, pursuant to the requirements of the
license agreement made between it and tha said Edison on or
about the twelfth day of Kay, eighteen hundred and e ighty-
eight, and your orator is informed and believes and
therefore charges the fact to be true that the cost of tha
said land, buildings, machinery and equipment was in ex¬
cess of tha mm of four hundred and fifty thousand dollars
and that the said plant thus acquired by the said Works was
well adapted to the purpose for which it was intended to be
used.
19. That after the erection and equipment of
tlio said plant the sdid Works entered upon th9 manufacture
of phonographs, graphopliones and other sound reproducing
maohines, and the deu ces, appliances and supplies connected
therewith and necessary the rdf or, pursuant to the terms of
the said licensing agreement of Hay twelfth, eighteen hyndrid
and eighty-eight, and in the year eighteen hundred and ninety
also entered upon the manufacture of similar machines, de-
-89-
vices, appliances and supplies pursuant to the terns of the
license agreement made between it and the said Edison
United Phonograph Company on or about the eleventh day of
March, eighteen hundred and ninety, and has continued to
manufacture the said machines, devices and supplies, except
j* that for the reasons hereinafter set forth it no longer mam-
}j features the records used in sound reproducing maohines or ihe
wax required for the cylinders thereof. That until in
or about the year eighteen hundred and ninety-six the
business of the said Works was of small volume and was carried,
on without any oonsiderablenprofit, and at times even at a
loss. That the small volume of the business carried on by
the said Works during the said years was due to the fact
that sound reproducing machines had not then come into
general use, and had not been applied to commercial uses,
although efforts were being made to create a popular demand
for the se.id maohines, to have them applied to commercial
uses, and to secure a much larger sale of them, That in or
shortly prior to the year 1R96 it became apparent that the
efforts made to create a large and profitable market for
safftnd reproducing machines and their growing popularity and
the new uses to which they were then beginning to be put
would shortly res 'Jit in a groat expansion of the business of
manufacturing and selling such machines, and would render
their manufacture and sale extremely profitable, and that '
the said Edison by reason of his familiarity with the affaibs
of the said Works and the developement of the industry in
which it was engaged clearly forjesawthat a large increase
was about to come in the business of the said Works, and t3ia
large profits which it should and would naturally derive
therefrom, and thereupon in violation of the trust relations
which he sustained with your orator and the other stockholders
-30)
Ihis 'benrtfit and wider his control fra.nde.ntly conceived th©
purjiose and plan of forming a corporation to which should be
diverted the profits which naturally and properly
would accrue and belong to the said Works from the oondriot
of its ©aid business, and thereupon caused and procured to
'j be formed a corporation under the name of the "National
y Phonograph Company" for the sole purpose of carrying out
> hia said fraudulent design and plan and of effecting the
said breach of trust.
20. That the s-sid National Phonograph Company
was formed on or about the twenty-seventh day of Janu-
ary, eighteen hundred and ninety-six, by the filing of a
certificate of incorporation in the office of the Secretary
of State of the State of New Jersey on the adid last
mentioned day, under and by virtue of the provisions of an
Act of the Legislature of the State of New Jersey entitled
I "An Act oonoeming corporations, " Approved April 7, 1875,
and the sevenal supplements thereto, for the purposes
in said certificate mentioned, that is to say:- to engage
in the manufacture and sale of phonographs and phonograph
appliances and supplies, to purchase and sell the atook of
other corporations, to purchase patents, claims and debts,
to purchase lands, buildings and machinery, to ereot
buildings and to carry on a general manufacturing business;
that the total authorized oapital stock of the said last
mentioned company as provided for in its said certificate
of incorporation was ten thousand dollars, divided into
one hundred shares of the pair value of one hundred
dollars each, and that the names and residences of the
stockholders named in and who executed the said certificate
and the number of a hare h subscribed by «aCh, are aa follows:-
George H. Lambert, Newark, How Jersey, eight shares;
Prances B , Stewart, Newark, ?Tew .Teresy, one share, and
Joseph K. Pranks, Newark, Not Jersey, one share, to which
said certificate of incorporation or the record or a
certified copy thereof, your orator begs leave to refer
for greater certainty should it be necessary hereafter so tc
do.
21, And jo ur orator ftu'ther shows and charges
the fact to he that the said incorporators of the said
National Phonograph Company were either partners or employes
of the personal counsel of the Bald Edison, and in the
formation of the said oompany acted as the agents and
representatives of the sdid Edison and solely under his
direction and control, and that all of the capital stock
•l of the said company, except the shares necessary to qualify
f, its directors, wan issued to the said Edison, and ever sines
. has been and now is ovmcd by him, and that by reason of the
ownership of all, or substantially all, of the capital
stock of the said Company, the said Edissn haB since its
incorporation nominated and selected and still nominates
and selects all of its offieors and directors, and c ontrola
the direction and operations of tine said o aapany, and is
entitled to receive and does receive all, or substantially
all, of the profits derived by it.
22. That since in or about the year 1890 there
has been a great demand for the machines manufactured by
the said Works and the devices, appliances and supplies usee
I' in connection therewith and necessary therefor, which deman<
-32-
haa been due An part to the faot that tha a aid machines
have during the said period been adapted and applied to
o omnia roial uses, and other uses not contemplated until
shortly prior to the beginning of tha said period, and
that if the said Works had during the said period been
operated .and managed for the, benefit of its stockholders
very large profits would have been received by them from its
earnings, but that in pursuauoe of his said fraudulent
design the said Edison has ever sinoe the incorporation
of the said National Phonograph Company been, and still is,
operating and controlling the said Works so as to divert to
the said National Phonograph Company a large part of the
profits which would otherwise have been derived by the
said Works, and which would hav$» resulted to the benefit
of your orator and the other stockholders therein other tha 1
the said Edison* That this result has been aoc oaplished
by the said Edison accepting from the said National Phono¬
graph Company on behalf of tha said Works, orders for
phonographs, grapho phonos and other sound producing
machines, and the devices and supplies connected therewith
and necessary therefor, in aery large <juun titles and to
ouch an extent as to praotioally absorb the entire output
of the factories of the sudd Works at prices Iobs than the
prevailing wholesale market prices of such articles, and
much smaller tJian the a 'aid Works As entitled to receive
and would haye received therefor under and pursuant to the
■tferinS'.bf-'V'the license agreements aforesaid, and at zmioh leas
tlian the said machines, devices and supplies oould have been
sold for to other persons and corporations. That the said
orders have been accepted to an extent which has made it i»-
-315-
possible for the said Works to fill orders for tiny other poi¬
son or corporation than the said National Phonograph Company,
except to a orattll extent and after great delay, and that tht
prioes at which the said orders have been and are being
accepted from and filled for the said National Phonograph
Company by the said Works are so low as to leave but little
profit to the saiA Works, and to enable the said National
Phonograph Company to sell the same at prices which secure
for it very large profits. That in mny instances the
prices charged the said Nati onal Phonograph Company by the
said Works for the machines and supplies manufactured for 1 ;
have been much smaller than the priceB charged the said
Edison United Phoncgrapli Company and other customers
of the said Works for similar articles, and that because of
the fact that the entire capacity of the factories of the
said Works has boon used to fill the orders of the said
National Phonograph Company the said Works has been
required to refuse to receive, and for a long period of
timo hois refused to receive; the orders of the said Edison
United Phonograph Compciny anil other persons and corporation i
for similar machines and supplies at prices in excess of
those charged by it to the said National Phonograph
Company, and that as a cover or excuse for refusing to
fill the said orders of the said Edison United Phonograph
Company and a'f other corporations and persons at the prioea
charged the said National Phonograph Company, the said
Edison lias oaussd it to bo stated by the said Works that thi
orders received from the National Phonograph Company
were so large that the latter was entitled to have them
-34-
fil led at much smaller prion » than those charged the other
customers o t the said Works; that as a result of this
oonduct the said Edison United Phonograph Company and
other corporations and persons engaged in the sale oi' the
Bald sound reproducing machines have been unahle to secure
stioh machines and supplies from the said Works except
at prices in excess of those at which similar articles
manufactured for the National Phonograph Company by the
eaid Works were being sold by the said National Phonograph
Company in the open market, and that the said persons and
corporations have for a long time been required to purchase
the machines and supplies required by them from the said
National Phonograph Company at prioes which netted to the
said National Phonograph Company sums largely in excess of
those required to be paid by it to the said Works for the
same articles.
23.. That in and by the said license agreements
of the twelfth of May, eighteen hundred and e Jghty-eight,
and the eleventh Of yMaroh, eighteen hundred and ninety, the
said Works is entitled and has the exclusive right to manu¬
facture not only souftd reproducing machines but all of the
appliances and supplies used in connection with or necessary
therefor which euvmot bo purchased in the open market, and
that the said Works is equipped and has the facilities for
the profitable manufacture of such applianoes and supplies;
that among the said appliances and supplies not purohaseabie
in the open market, and whloli are ordinarily manufactured
by corporations or persons engaged in the manufacture
or sale of sound reproducing Machines, are the records
used in such machines and the wax from, which the cylinders
of tlie Bald moMnsfl are wade, and that prior to the
year eighteen hundred and ninety-six the auid records
and wax were Manufactured by thft Baid Works in large
quantities at a s ubstantial profit. That ohortly after
the incorporation of the said National Phonograph Company
the said Edison in further pursuance of his auid fraudulent
purpose and plan caused the naid Works to discontinue the
manufacture of the said records and of the wax for the
said cylinders, and has ever since caused the said recorda
to bo manufactured by the said National Phonograph Company,
and has caused the said Works to purchase large quantities
of the said records from that Company at prices largely
in excess of the ooBt of manufacture, and has directed
all of the persons or corporations applying to it for such
records to purohase the same from the said National
Phonograph Company, and has An this way caused a very
considerable profit which properly belonged to the said
Works to be received by the said National Phonograph
Company. That during the same period the said Edison
has caused the wax required for the cylinders of the
machines manufactured by the said Works to be manufactured
by the Edison Manufacturing Company, a corporation
formed by and under the direction of the said Edison in
further pursuance of Ms said fraudulent design, all
of the stock of whloh is owned or controlled by the said
Edison, and has during the a Aid period caused the said
Works to purchase large quantities of wax required by it
for the said cylinders from the said Edison Manufacturing
Company at prices in excess of the cost of manufacturing
•36-
and has in this way caused the profits which it would
otherwise have been entitled to receive to be acquired
by the said 3Sdio.cn Manufacturing Con?'any and to be paid to
him as the owner of all, or substantially all, of its
capital stock.
34, 'Chat ever since the nuking of the said
agreement of March e leventh, eighteen hundred and ninety,
between your orator and ths said Edison (being the
agreement last above set forth) the said Edison and your
orator have eaoh owned and do each now own at least one-
fifth of the nominal capital stock of the said Works;
that the outstanding capital stock of the said Works
has never exceeded bIx hundred thousand dollars, and
consists of six thousand aim res of the par value of one
hundred dollars eaoh, whleh your orator is informed and
believes are now owned as follows:
Thomas A. Edison
of whioh 1105,60/100 shares are
held in trust for said Thomas A,
Edison by the Mercantile Trust
Company , a corporation organised
under the laws of New York, pur¬
suant to the provisions of the said
agreement of May twelfth, eighteen
hundred and eighty-eight.
International Gramophone Co.
Mrs , Thomas A. Edison
Charles Baohellor
Henry B. Auohinoloss
3421,81/3.00 shRreB.
1440
466 .75/100
348*44/100
250
J, S', Handolph 10
W, E, Gilmore 163
Oliver Wells 8
George N. Moris on
-37-
2{S, That pursuant to the provisions of the
agreement betv/een your orator and the said Edison > an^
forthwith upon the Making thereof, two peraone were
selected by your orator aa its representatives on the
hoard of Directors os' the said Works and elected members
of the said Board, and three other parsons selected by and
to represent the n aid Mia on were then also elected
members of the said Board, and that such representation
in the board of directors of the said Works selected by and
representing your orator were .Tohn E, Searles, who was
then the president of your oratorio and J." T. McChesney,
each of whom then held five shares of the capital stock
of the said Works ; that on or about the eighteenth day
of December, nineteen hundred and three, the shares of
stock in the said Works owned by the said Searles and Mo Che s
nay were sold and transferred by them to Stephen E,
Moriarty and Oliver *T. Wells, and that thereupon and on or
about the said last mentioned day, your orator by a letter
addressed and sent to the a aid Works informed it of the
transfer of the said shares from the said McChesney and
Searles to the said Moriarty and Wells, and advised the
said Works that the said Moriaty and Wells had been chosen
by it to represent it on its board of directors and re¬
quested it to transfer the shares theretofore held by the
said McChesney and Searles to the said Moriaty and Wells and
to call a meeting of its stockholders, and elect the
said Moriaty and Wells mamba -a of the said board of
directors; that the officers of the said Works thereupon
transferred to the said Wells and Moriair.ty the shares of
stock theretofore held by the said Searles and McChesney
-38-
respectively, but refused to comply with the request of
your orator to call a meeting of its stockholders or to
elect the said Wells and Moriarty members of its board of
directors; that thereafter, and on or about the eleventh
day of February, nineteen hundred and four, the said
shares of stock so transferred as aforesaid to the said
Moriarty were transferred by Mm to Q, W. Moris on, who then
was and still is the secretary of, your orator, and that on
the said last mentioned day, by a letter addressed and mailed
by your orator to the said Works on that day notified
the said Works that the a dd Morison and tho said Wells
had been elected and appointed by it to represent it upon
tho board of directors of the sold Works; that the said
Morrison had been appointed in place of the said Moriarty,
and that it desired the officers of the s-sid Works to call
a meeting of the stockholders thereof so that the said
Morison and Wells could be elected members of its Board of
Directors. That thereafter 'and on. or about the twenty-
third day of February, nineteen hundred and four, the
officers of the said Works transferred the said shares
of stock- standing in tho name of the said Moriarty to the
said Morieon, but refused and have ever since refused to
call a meeting of the stockholders of the said v/orks for tho
purpose of electing the said Morison and Walls members
of its board of directors, and your orator ohargas that
the refusal of the officers of tho said Works to call the
said meeting has been caused by and is due solely to the
acts and directions of the said Edison,- and that the said
Edison has refused and still does refuse to vote for the
-39-
said Mori non or the said Walls , or either of thorn, or lor
any other persona an directors of the said Works, if they
he n a looted hy yonr orator.
86, That thereafter , and on or about the
twenty- seventh day of April, one thousand nine hundred
and four, your orator by a letter addressed and mailed
on that date to the said Works rouuoBtod it to notify
your orator of the time and place of the next annual
meeting of the stockholders and also to give it some
assurance that the said Edison would fulfil his said
agreement with your orator of March eleventh, eighteen
hundred and ninety, and elect the 3a id Wells and the
said Morison members of the board of directors of the
said Wofcks, and that on or about the fourth day of May,
nineteen hundred and four, your orator was advised by
fohn i’, Kandolph, the Secretary of the said Works, that
the annual meeting of the stockholders of the said Works
as fixed by yhe by-laws should have been held on the second
day of May, nineteen hundred and four, and that as that time
had passed a special meeting wo’ild have to be called, and
that the officers of the sold V/orks have ever since refus¬
ed to call a meeting of the stockholders of the said
Works or to elect directors in the places of the said
MeChesnsy and Searles, and that the said Edison has re¬
fused and still refuses to elect any directors to repre¬
sent yonr orator on the board of direotors of the said
Works ,
87, That in and by the by-laws of the said
•40-
Works adopted at the time of it a organisation, and which,
are a till in force, it is provided that the hoe in? oh and
affaire of the a aid Works shall be managed by a hoard of
five directors who shall he e lected annually by the stookho'
era at their annual Meeting, to ho held on the first Monday
(d-
of Kay in each year, and that special Meetings of the said
Works nay he called at any tins by order of the president
or on the reexuest of throe Air eo torn j that hy the sale and
transfer of the shares of stock in the said company former¬
ly owned hy the said Gearies and JffoOhesnay they severally
ceased to he stockholders in the said company and members
of the hoard of directors thereof; that the feoard of
directors of said coaspany is now and since the eighteenth
day of December, nineteen hundred and three, has bosn
composed of only three instead of five members , that is to
say, of the said Thoms A. Edison, William E. Gilmore,
and John S'. Randolph, and that the said- Gilmore and Ran¬
dolph are entirely controlled by and are acting and have
acted under the sole direction and control of the said
Edison, and not as independent members of the said fjoard
of directors, and that your orator is unable to call or
Procure the calling of a mating of the stockholders of
the said company for the purpose of electing a new hoard
of directors,.
That your orator is entirely without in¬
formation as to the financial condition of tlia said Works
or the value of its stock holding a therein,’ and tliat on
divers occasions and particularly in the month of JFebruary,
-41-
1904, it has endeavored to hooutw .inform t Ion regarding the
affairs and condition of the said Works, and for ihi3
purpose through the president of your orator on or about tho
17 th day of .February, 1904, Hit do a request and demand
upon the said Works and the an id Edison for inform t ion as
to the affaire of the a,dd Works and the condition of its
business and finances, and also for t.n opportunity to
inspect and examine the plant and the books, papers and
documents of the said Works ; that such request and demand
were ffi.de at the. Works of the said company on the day last
aforesaid by Oliver .T. Vfells, the president of your orator,
and himself a stockholder in the said Works} that the said |
V/ella attempted at that time to icakn the demand in person
ux>on the said Edison, but that the said Edison after learning
of the Subject of the visit of the said Walls refused to
see him, or to comply v/ith such request or demand, and that|
the said Wells thereupon made the said demand and request
upon the said Gilmore, who was the general manager of tha
said Works, and at that time in charge of its plant, books |
and other property, subject only to the control of the-
said Edison, and that the said Gilmore thereupon declined ajid
refused to comp.ly v/ith. the o-vid request and demand without
giving any other excuse or reason therefor than that he did
so by the direction of the said Edison, and that the said
Gilmore then further informed the said Wells that neither
he nor any one else representing your orator would be
permitted to .examine the said plant or ahy of the books or |
accounts of the said Works, and would not be given any
information relating to the affaire, condition or finances
that the said Works and its officers have at all times since
the making of the said r« anest and demand, and although the
seine have frequently been renewed, refused to give y oiir
orator permission to examine its plant, books oraooounts
or any information relating to its affairs', condition and
flnanpes.
29. That the said Thomas Alva Edison and
John E. Randolph and William E, Gilmore have each been mem¬
bers of the board of directors of the said Works continuous¬
ly since the month of May, eighteen hundred and ninety-six
and have since the monthof December, nineteen hundred and
three, constituted the board of directors of the said Works,
and that since the month of Kay, eighteen hundred and ninety-
six, the said Edison has been the president of the said Works,
and the said Randolph the secretary and thwaaurer thereof,
and the said Gilmore the manager of the factories of the 3 a; .A
Works, and that the said Randolph and Gilmore have at all
times while acting as officers and directors of the said
Works been entirely subject to the control and dictation of
the said Edison, and have with the said Edison managed Its
affairs as directed by Mm and with the sole purpose of
serving the interests of the said Edison to the injury of
the other stockholders in the Bald Works.
A 30., That the said Edison, Gilmore and Randolph
1 have for several yeard also constituted the entire board of
I directors of the said National Phonograph Company and of
/ the said Edison Manufacturing Company; that the said Edison
j is the president of the said National Phonograph Company
| A and the said Randolph is the secretary and treasurer
v thereof, and also the secretary and treasurer of the said
Edison Manufacturing Company; that the add Gilmore is
' the , vice-president of the said national Phonograph Company
ah,d the president of the said Edison Manufacturing Com¬
pany, and that the said Randolph and Gilmore, while
acting as officers and directors of the sdid companies,
have at all times been ontiroly subjsot 'to the oontrol and
direction of the said Edison.
-43-
31. That the preservation of the assets of the
said Works and the prevention of the farther waste thereof,
and the wrongful diversion of the profits to he derived
from its business, and the preservation of its books,
records and papers, which contains evidence of the wrongful
doings of the said Edison, Gilmore and Randolph herein¬
before reoited, and the means of following and recovering
the profits which the said Works las heretofore been
wrongfully deprived of, require the immediate appointment
of one or more persons as the receiver or receivers of the
s >ild Works.
WHERJWORE, as your orator is remediless
emoept as your Honor may grant suitable relief by in¬
junction or otherwise, including the appointment of a
receiver or receivers for the said Works with authority to
sue for, and by other legal proceedings to recover, regain
and preserve the assets and profits of the said Works so
wrongfully diverted as aforesaid, and which legal proceed¬
ings for such recovery can be maintained only by and in the
name of the said Works, or by a receiver or receivers duly
appointed for that prupcse, it prays e tin 1 table relief
as follows:-
1, That the said Thomas Alva Edison, John
P. Randolph, William B. Gilmore, National Phonograph
Company, Edison Phonograph Works, and Edison Manufacturing
Company, and each of them, may answer this bill of com¬
plaint and each and every matter therein contained, but
without oath, which is hereby waived.
2. That a receiver or receivers may be appoint¬
ed to taka oharge of and preserve and protect the assets,
-44-
books, papers, aoc ountu and business of the said Edison
Phonograph Works, to carry on its business, and under the
direction of the court to endeavor to collect such of its
moneys and other assets as have been wrongfully diverted
thorefroia as hereinbefore more particularly set forth,
3, What the said Edison, Randolph, Gilmore
Edison Phonograph Works and Natioiial Phonograph Company may
make discovery of the moneys, assets and profits of the sale
Edison Phonograph Works wrongfully diverted to the Baid
National Phonograph Company as hereinbefore more particu¬
larly set forth.
4, What the said Edison, Randolph, Gilmore
Edison Phonograph Works, and Ed A do n Manufacturing Company
may make discovery of the moneys , assets and profits of the
said Edison Phonograph Works wrongfully diverted to the
said Edison Manufacturing Company,
5, What the said EdiBon, Randolph, Gilmore,
Edison Phonograph Works, National Phonograph Company and
Edison Manufacturing Company, or such of them as have
knowledge thereof, make discovery of the following par¬
ticulars:
(a) Of the number of shares of the capital
stock of the National Phonograph Company heretofore issued
and now outstanding, and the names and holdings of the
respective holders thereof, and who are the true owners
thereof.
(b) Of the number of shares of the capital
stook of the Edison Manufacturing Company heretofore issue:
-45-
and now outstanding, and the names and holdings of the
respective holders thereof, and who are the true owners
thereof.
(o) Of the assets and property now he longing
to the said Edison Phonograph Works and its liabilities.
(d) Of the receipts, disbursements and profits
of the said Edison Phonograph Works prior to the incor¬
poration of the National Phonograph Company and the
prices for which the several articles Manufactured by it
were during the said .time respectively sold and the pro¬
fits thereon respectively.
(e) Of the receipts* disbursements and profits
of the said Edison Phonograph Works after the incorporation
of the Irrational Phonograph Company and the prices for
which the several articles manufactured by it were during
the said time respectively sold and the profits thereon
respectively,
(f) Of the orders received and accepted from
time to tiros by the sold Edison Phonograph Works from
the a aid National Phonograph Company, and of the prices
and terms upon whioh said orders were received, accepted
and filled, and of the cost of filling the said respective
orders based upon the cost off laboijr, materials and general
expenses of the business, and the profits if any upon said
orders respectively over and above such cost.
(g) Of suoh orders as have been received by the
said Ediss n Phonograph Works since the incorporation of
the said National Phonograph Company from other persons
-46-
or corporations, and whether the same have ha an accepted
or declined by the said Edison Phonograph Works, and upon
what terms and conditions (especially as to the price and
time of delivery) the said orders were severally based.
6. That an order way he Made requiring the
production of the hooks, accounts and papers of the said
Edison Phonograph Works, the said National Phonograph
Company and the said Edison Manufacturing Company, in¬
cluding the minute hooks, stock ledgers, transfer hooks
and hooks of account of each of the said corporations, do
far as they relate to transactions hereinbefore referred
to, and that your orator have leave to inspect the earns
and to take copies thereof.
7. That an order may he made requiring the
said Edison, Randolph, Gilmore and Edison Phonograph
Works to render a just and true account of the financial
transactions and dealings of the said Edison Phonograph
Works since the incorporation of the said National Phon-
graph Company,
8. That a decree may he made, ordering and
requiring the payment by the said Edison, Gilmore, Randolph
National Phonograph Company and Edison Manufacturing Com¬
pany, or one or more of them to the said Edison Phonograph
Works, or to a receiver or receivers to -be appointed
therefor, of all the profits and Moneys which have been
improperly or wrongfully diverted from the said Edison
Phonograph Works by the said Edison, Gilmore, Randolph,-
National Phonograph Company and Edison Mhufao taring Com-
-48-
ra.ny, or any or either of them,
fl, That an injunction do issue roe training
the said Edison, Randolph, Gilmore, National Phonograph Com¬
pany, Edison Manufacturing Company and Edison Phonograph
Works, and each of them, and all officers, agents and at¬
torneys of the said Edison PJionograph Works, National
Phonograph Company and Edison Manufacturing Company from
removing, destroying, tampering with or disposing of the
documents, records, contracts, obligations, hooks, ao-
counts or papers belonging to or in the possession or con¬
trol of either of the said corporations , or in the possess¬
ion or control of any of their officers, agents and at¬
torneys, relating to the business or affairs of any of
the said corporations, and also restraining them, arid each
of them, from further diverting any of the profits or
moneys properly belonging Or to belong to the said Edison
Phonograph Works to the said Edison,, National Phonograph
Company, and Edison Manufacturing Company, or any other
person or corporation, and restraining them and each of
them from causing, promoting or assisting any such di¬
version of profits.
10. That your orator may Jiave suoh other and
further relief in the premises as may be equitable and
i uat .
May it please your Honor the premises considered
to grant unto your orator not only the State 'b writ of
injunction as hereinbefore prayed, but also the State's
writ od subpoena issuing out of ami under the seal of your
-48-
Honorable Court to be directed to the Bald Thoms Alva
Edison, John P. Bandolph, Villlam E. Gilmore, Edison
Phonograph Works, National Phonograph Com -any, and
Edison Manufacturing Company, commanding them and each of
them by a certain day and under a certain penalty there¬
in to be expressed to he . andrappedr ^before your- Honor In
this Honorable Court then and there to answer all and aingu>
lar the premises, and to stand to, abide by and perform
such further decree therein as to, your Honor shall soem
meet and as shall ne agreeable to equity and good conscience
Ami your orator as in duty Txmld will ever
pray, fto •
lindabury, Bepue ft Paulks,
Solicitor for and of counsel with Complainant
IN CHANCERY OP NEW JERSEY.
I
Between ;
The International draphophono;
Company, Complainant, ;
and j On Bill oto.
Thomas A.Edison, and others, ; ANSWER.
Defendants. ;
|j Dio several Answer of Thomas A.Edioon, to the 3111 of
jj Complaint of the International Oraphophone Company,Complain-
j| ant.
This defendant, to so much of said bill and ouoh parts
thereof as he In advisod it la material or necessary for him
to make answer unto, answering says:
I. Defendant admits that the complainant, the Inters
j national Craphophone Company, is a oompany organized and ex¬
isting under the laws of the state of New York, with its
prlnoipol place of business in the Borough of Manhattan,
County and Stats of New York, and that it is a stockholder of
record in the Edison Phonograph Works (referrod to in the
bill of complaint and heroin as the "Works"), a corporation
organized and existing under the laws of the State of Now
Jersey; but whether complainant, under its shorter and organi¬
zation, la possessed of the numerous and oomprohonoive cor¬
porate powers set forth and claimed in paragraph 1 of the bill
of complaint, defendant is not informed ; and defendant leaves
oomplainant to make suoh proof thereof as it may be advisod
is material.
II. Defendant admits that complainant is now the osten¬
sible holder of 1430 shores of the capital stock of the
•1-
Edison Phonograph Y/orks, that said chare a stand in ita name
|n the hooko of said Works and have so stood since about the
month of ?iarch, 1890; hut defendant is not informed whether
it was within the corporate powers of complainant to purchase,
liold or own said stock; and defendant leaves complainant to
make suoh proof thereof as it may he advisod is material.
Defendant , however, iB informed and believes that complainant
is no longer either the virtual or beneficial owner of said
II
jbtook; and that whatever its ownership in said stock may ho,
it is at most but nominal.
| III. Defendant admits the allegations contained in para-
graph 3 of the bill of complaint.
jj IV. This defendant admits the allegations contained in
paragraph 4 of tho bill of oomplaint,in so far as said alle¬
gations relate to the organization of the Edison Phonograph
j|3ompanyt its purpose of organization, its oorporato powers,
Jtho persons by whom said corporation was organized, and the
Irespeotivo holdings of said persons; but defendant denies
•that tho aBsooiated stockholders Tomlinson, Tate, Gilliland and
Insull, were wholly under this defendant's direction and con¬
trol, or that they were without any personal or financial
interest in the said Edison Phonograph Company.
V. Defendant admits that on or about tho 20th day of
October, 1807, a contraot was entered into between himself
and said the Edison Phonograph Company, as alleged in para¬
graph 8 of the hill of ooraplaint, whereby there was granted
to this defendant the exclusive right, authority and lioense
to manufacture the various inventions covered by suoh letters
patent and applications therefor as wero then owned, or as
were thereafter to be owned by said oompany, and that thereby
this defendant 'became vested with a lioonae right to manu-
I facture the phonograph and certain applianoes therefor under
I the tema and conditions therein specified.
! VI. This defendant admits the allegations contained in
jj paragraph 6 of the bill of oomplaint, in so far as the same
ii relate to the organization of the Edison Phonograph Works*
I its purpose of organization, its corporate powers, and the
persons by whom said corporation was organized; but dofendnat
i denies that the associated stockholders, Batohelor, Tomlinson
'and Tate, were wholly under this defendant* s direction and
control or that' they were without any personal or financial
interest in the said Edison Phonograph Works.
VII. Defendant admits the allegations contained in
paragraph 7 of the bill of complaint, except in so far as
undue or improper influence on his part is imputed by the
i statements therein contained; and that, as stated in paragraph
: 7,
! "said Edison agreed to give and did thereby give to the
! said Works the exclusive right, authority and license
under each and every the letters patent and applications
therefor under which a lioonae has been granted to him
by the said Edison Phonograph Company, pursuant to the
provisions of the said agreement made between them on the
28th day of October, 1887, to manufacture the inventions
therein severally described, and agreed that he would
give and grant to the said Works a similar lioense under
each and every the letters patent upon inventions under
whioh he might reoeivo or be entitled to reoeive a license
to manufacture pursuant to the said last-mentioned agree¬
ment, and did further agree to give, and he thereby did
give, to the said Works the exoluoive right, authority
-3-
| and lioenae t0 manufacture phonographs and the supplies
neoeosary therofor for export and use in foreign oountrie9
it being therein recited to bo the intention to eonfer
upon the said' Works the same right and license under the
patents owned or to be owned by the said Edison Phono¬
graph Company as were conferred by the said last-mentioned
company upon the said Edison, and the same right to
manufacture phonographs and supplies for export and use
in foreign countries as were conferred upon the said
Edison by oontraot between him and the said Gouraud here¬
inbefore referred to, and the said Works did thereby on
its part agree with the said Edison that it would forth¬
with equip and erect a factory suitable for the manufac¬
ture of phonographs and the supplies necessary therefor
and capable of supplying the demands of the Bald Edison
Phonograph Company and that it would promptly meet and
fill all the orders of the said oompany and would deliver
to it or to ouch persons as it might direct, for sale
within the United States of Amerioa and the Dominion Of
Canada, all phonographs and supplies so ordered at the
aotual cost of manufacture thereof plus twenty per cent,
of such ooat, the cost of manufacture being defined to
include oost of labor, material and general expense."
VIII. Defendant admits the allegations contained in
paragraph 8 of the bill of oomplaint, exoept in oo far as
undue or improper influenoa on his part is imputed by the
statements therein contained, and exoept in so far as the
allegations of said paragraph charge that all acts and doings
of said Works, from and at all times sinoe Karch,1890, have
been at the procurement and under the Dole direction and con¬
trol of this defendant.
i| defendant admits that since March, 1890, he has at all
[times exercised a general oontrol over the affairs of the
jEdioon Phonograph Works, but he alleges that the affairs, acts
jjand doings of the said Works have, nevertheless, been legiti¬
mately direoted and administered by the Board of Directors
,;and executive officers of said company.
|j And defendant further says that from the month of Jiarch,
i;1890, to December 10, 1903, all of the affairs, aots and do-
j'ings of said Phonograph Works were administered with the spe-
jjoific knowledge and assistance of two directors, in said Board,
ijWho, during all ouch period, were acting as representatives
[of the International Oraphophone Company, oomplainant heroin.
! '•
ij IX. Defendant admits the allegations contained in para¬
graph 9 of the bill of oomplaint, in so fas as said allege^
jltions relate to the organization of the Edison United Phono¬
graph Company and the general purposes of its organization;
ii
jbut defendant is not informed whether said- company, as so
[organized, possessed the corporate powers stated in tho alle¬
gations of said bill of oomplaint ; and he loaves oomplainant
jto make ouch proof thereof aB it may be advised is material.
X. Defendant admits the allegations contained in para¬
graph 10 of the bill of oomplaint , save and excepting the alle¬
gation that the Edison United Phonograph Company did confer
l^upon the Baid Works tho right and license to manufacture all
of the phonographs, graphophones, phonograph-graphophones, and
supplies covered by the said letters patent, applications, and
inventions." Defendant admits that, by the several agreements
itherein referred to, it was the purpose of said the Edison
United Phonocratih Connanv to confer unon nnid the Minon
ii Phonograph Y/orks the general right to manufacture phonographs, j
ijgraphophonea and oupplies therefor. But defendant aa ys that |
>| it waB not the purpoao of oaid agreemento to oonfer the right, i
ij exclusive or otherwise, to manufacture phonograph reoordB.
ij XI. Defendant admits the allegations contained in para¬
graph 11 of tho hill of complaint, excepting as such allega¬
tions contain an inference that, in the oontract between Thomas
jA.Edison and the Edison United Phonograph Company of March 11,
I 1090, there was reaerved to the said Edison a manufacturing
| right, exclusive or otherwise, which he might or was expected
| to transfer to the Edison Phpnograph Works to make phonograph
: records. Defendant avers that, in and by other parts of said
j oontract than those quoted by complainant in the allegations
j of paragraph 11 of the bill of oomplaint, the right to manu-
jfacture phonograph reoords was specifically reserved, by said
lithe Edison United Phonograph Company, from said Edison ,in
I! words and terms as follows:
"Nothing herein contained shall prevent the purchas-
|i ing, acquiring, selling or using, by the second party or
i by its licensees, of phonograms or instrumental or vocal
reoords made on phonogram blanks by the use of a phono¬
graph or phonographs."
And defendant prays leave to refer to Baid agreement for
greater certainty, should it be necessary hereafter so to do.
XII. Defendant admits the allegations contained in
paragraph 12 of the bill of complaint, excepting as suoh alle¬
gations contain an inference that, in the oontraot between the
International Graphophone Company and the Edison United Phono¬
graph Company, of March 11,1890, there was reserved to the
-6-
!l former company, or that there was an intention on the part of
the parties to confer upon the Edison Phonograph WorkB the
right, exclusive or otherwise, to manufacture phonograph
reocnrds. Defendant avers that, in and hy other parts of said
contract than those quoted or paraphrased by complainant in
the allegations of paragraph 12 of the bill of complaint, the
right to manufacture phonograph records was specifically re¬
served, by said the Edison United Phonograph Company, from
said International Graphophone Company in words and terms as
follows:
"Nothing herein contained shall prevent the purchas-
i ing, acquiring, selling or using, by the second party, or
jl by its licensees, of phonograms or instrumental or vocal
jl records made on phonogram blanks by the use of a phono-
jl graph or phonographs."
ij And defendant prays leave to refer to said agreement for
jj greater certainty, Should it be necessary hereafter to to do.
| XXXI. Defendant admits that on or about the 11th day of
I ?iaroh, 1890, a license agreement was entered into by and be-
! tween said the Edison United Phonograph Company, party of the
! first part, and the said Works, party of the second part, and
f that said agreement contained the various paragraphs and parts
j recited in paragraph 13 of the bill of oomplaint; but defend-
I ant says that by said license, no right, exclusive or other¬
wise, to manufacture phonograph records was conferred upon sail
I -the Edison Phonograph Works by said the Edison United Phono¬
graph Company.
XIV. Defendant admitB the allegations contained in para-
I graph 14 of the bill of complaint, but defendant begs leave
to refer for greater certainty to the contract between said
-7-
Edison and the International Graphophone Company, dated March
11, 1890, should it he necessary hereafter so to do.
jj
XV and XVI. Defendant has no knowledge or information
sufficient to form a heliof whothor, as stated in the hill of
Jcomplaint, said agreement between said Edison and said the
jlnter national Graphophone Company of March 11,1890, set forth
and referred to in paragraphs 18, 15 and 16 of said hill, was
regarded by complainant as a valuable and substantial con¬
sideration for its entering into the said agreements dated
March 11,1890 with the Edison Phonograph Works and the said
Edison United Phonograph Company, and for the transfer by oom-
Iplainant to said Edison United Phonograph Company of its
irightj title and interest in and to the various letters patent,
[inventions and patent applications referred to in the said
agreements; and defendant leaves complainunt to make ouch
proof thereof as it may bo advised is material. But defendant
!3ays that however said contract of March 11,1890 may have
been regarded by complainant, or whether as a valuable and
substantial consideration for its entering into Bald agree-
nento of March 11,1890,1s wholly immaterial to the validity
of said last-named agreements, for the reason that Bald con¬
tracts, by apt terms, express considerations that ate in
themBolvos adequate and complete « And defendant further says
that said oontraot between said Edison and said the Inter¬
national Graphophone Company dated Maroh 11,1890, was not
entered into upon or for any other or different consideration
than thaA which is therein expressed. Defendant .however,
says that the International Graphophone Company did not, on
or about March 11,1890, subscribe for the 1440 shares of stook
of said WorkB, aB alleged in paragraph 16 of the bill of
jjoomplaint. The faota are, an defendant believes, that caid
International Graphophone Company did subscribe for and receive
B20 auoh Bhareo, and that it did receive 920 shares for and
| in consideration of certain machinery and tools which proved
to be of but small value to said Edison Phonograph Works.
! XVII. Defendant admitB that in or about the year 1094 he
; sold all of his shares of stock in the said Edison United
|| Phonograph Company, as statedin paragraph 17 of the bill of
|j complaint, and that since that time he has had no interest
i! Y/hateve r in said company; and defendant says that by the sale
j of his said stock he thereby saorifiood his entire interest in
j| all of his foreign patents relating to phonographs, excepting
!j in Canada, and that this action was forced upon him by reason
| of the incompetent management of said Edison United Phono-
! graph Company and particularly because of a business polloy
I whioh, from his previous unfortunate experience in this coun-
| try, he well knev/ must prove ineffective and abofctive and
j which must result only in the ultimate failure of said Edison
United Phonograph Company. Such action, howevor, was only
taken by defendant after an earnest endeavor on the part of
himself and hin foreign partner, Ooraud, to bring about, suoh
a change of management a3 in their opinion was required for
the successful continuance and promotion of suoh business.
Defendant further says that after numerous protests by him¬
self and said Gouraud as to the ineffective business methods
of said company, suit was brought in the Chancery Court of
New Jersey by himself and said Gouraud against said Edison
United Phonograph Company, et al., as appears from the reported
oases in Chanoory, 7 Diok. 620-627 (May Term, 1894); but that
they v/ere unable by said suit to obtain redress, it having
— 9—
jj been there held that since the directors of said Ed loon Unit-
i od Phonograph Company had kept within the ocope of their
| powers and had aoted in good faith and with honeot motives,
hov/ever ineffective, erroneous and mistaken, their acts were
not subjeot to judicial control or revision, and that if
complainants, Edison and Oouraud, were dissatisfied, the only
redress or remedy open to them was the election of a new board
of direotors, or the selling of their Btook and their v/ith-
drawal from the corporation. And defendant says that it was
upon this ruling that he 30ld his said stock in said Edison
United Phonograph Company and withdrew therefrom.
XVIII. Defendant admits that a factory was built and
equipped by and for said the Edison Phonograph Works, at WeBt
j Orange, County of Essex, State of Hew Jersey, in the year
| 1888, an alleged in paragraph 18 of the bill -of complaint;
j but defendant denies that the cost of said factory, land,
I buildings, machinery and equipment had a value of four hun-
! dred and fifty thousand dollars, or, that, in the year 1888,
j the value thereof exceeded one hundred and eighty thousand
Ej dollars.
XIX. Defendant admits that, after the erection and
j equipment of its manufacturing plant said Works entered upon
j the manufacture of phonographs, devices, appliances and sup¬
plies oonnectod therewith, pursuant to the terms of said li¬
cense agreement of May 12,1888; and that, in the year 1890
and thereafter, said Works continued upon the manufacture of
similar machines, devices and appliances under the terms of
the license agreement betY/een said Works and the Edison United
Phonograph Company, dated Maroh 11,1890, and that said Works
thereafter continued to manufacture said maohines, devices and
i
.10-
supplied; but defendant denied that oald Works evor built
graphophonoo or other sound-producing machines than phono¬
graphs or devices and appliances appurtenant thereto, a s al¬
leged in the bill of complaint; and he further denies that
I'aaid Works ever acquired or attempted to acquire the right,
[[exclusive or otherwise, to manufacture phonograph recorfiD for
use in sound-producing machines, or the wax required for the
cylinders thereof. Defendant admits that said Works did, at
jthe request of the Worth American Phonograph Company and the
[Edison United Phonograph Company, at times manufacture suoh
jreoords, but only at the request of said companies; and he
jjfurther nays that the right to manufacture phonograph records
[was claimed by and reserved to the North American Phonograph
([company, a3 owner of the stock of the Edison Phonograph Com-
jlpany, and to its licensees for the United States and Canada,
jjand by the Edison United Company for all other countries, and
that, as a rule, the manufacturing of such records subsequent
jto March 11,1090, until 1896, was done independently of said
[Works by said North American Company and its lionnsees, and
at all times after March 11,1890 by said the Edison United
Company and its licensees; and that such right was conceded
to said North American Company and its licensees by said
Edison Phonograph Works, with the full knowledge and oonsent
of its board of directors, two of whom were members thereof as
representatives of said International Graphophone Company.
And defendant says that prior to 1996 said North American
Company, the Edison United Phonograph Company and their li¬
censees made great numbers of phonograph reoords independently
of said Works.
Defendant further says that the charges of fraud and
-11-
unfair dealing alleged against him in paragraph 19 and else¬
where throughout the bill of complaint are preposterous and
l!
unfounded; that at all times defendant has done his utmost
|
J to further the welfare and prosperity of said Y/orks; that from
the time of its organization, through the long period of its
misfortunes and insolvency he expended more than two hundred
thousand dollars in its support end maintenance, for whioh !
he has received and can expect to receive no substantial re¬
turn; and that if said Works were now deprived of the phono¬
graph business that said National Company has found for it
| to do, the value of itB bonds and capital stock would be wholly
i destroyed.
j defendant says: The right to exploit, rent and sell the j
j phonograph, in the United States and Canada, v/as cold by him,
in 1888, by the sale of his stock in the Edison Phonograph Com-
| pany,to one Jesse H. lippincott, who had already acquired from
the Amerioan OraphophonB Company the exclusive right to like¬
wise exploit, rent and sell the graphophone, a modified form
of phonograph. That the purpose of said Lippincott was to
impartially present to the publio defendant's phonograph and
the graphophone through oub-companies whioh should act as
sub-licensees of a parent oompany then yet to be formed. That,
pursuant to such plan, the North Ame rican parent company was
forthwith organized, as were numerous sub-companies; and with
capitalizations aggregating nearly thirty million dollars.
But that defendant had no part or hand in the organizing,
capitalizing or exploiting of those companies, nor in the
business policy of tho lippincott plan except as ho was close¬
ly oooupied in attempting to improve and manufacture the appa¬
ratus, and if possible to make profitable the exclusive manu¬
facturing rights that had been conferred upon the Edison
-12-
j! Phonograph. Works. That, upon the equipment of a plant at a
j| ooot of about ono hundred and eighty thousand dollars, said
jj Works entered upon the manufacture of phonographs pursuant to
i! the terms of said lioenae agreement and so continued during
|| the existence of the Worth American Company, or until 1896.
I; That, at the organization of said Works, its capital 3took
|| was three hundred thousand dollars, although the capital iza-
ij tion was increased about ilarch 10,1890, to six hundred thous-
!j and dollars, as statedin paragraph S of the bill of complaint;
|| and that between 1880 and 1896, several thousand phonographs
j! were manufactured for. the Worth Amerioan and the Edison United
jj Phonograph Companies, but only at a largo loss to said Worko.
jj That in the boginning, defendant believed the T.ippincott
ij plans to be feasible and that a large and profitable business
: would bo oreated for waid Worko; but that, as is usual in
j adapting new machines to particular uses, changes and addi-
i tions were required, until only after some four years of ex-
j perimentation and experimental manufacturing, wa3 a Batis-
ij faotory form of phonograph developed. That during such period
I of change and improvement, between the years 1889 and 1393,
j many expensive tools for its manufacture were made and dis¬
carded; and many other expenses were incurred in standardizing
and^^i^ing the phonograph to its then expensive form; and
thereby, reason of the failure of the Worth Amerioan Company
to meet its obligations and to pay for apparatus which said
Works had manufactured for it, said Works beoame hopelessly
insolvent prior to 1893. That, in 1893, said Works still owed
defendant about three hundred and twenty thousand dollars for
money advanoed to it, notwithstanding that in January, 1893,
defendant had accepted Worth Amerioan Company's bond3, dollar
for dollar, for money advanced to said Works to the extent of
-13-
j| one hundred and forty-six thousand dollars. That in these
:! transactions defendant sustained -very largo losses. That,
|| from the Worth American bonds, aforesaid, he realized only a
jj dividend of about eighteen ?or oent. , v#hioh was awarded him
:i in his purchase of the Worth American Company* u aasetB for the
jj National Phonograph Company; nor during the three years prior
j; to August, 1097, was defendant’s claim against said Works for
|j the three hundred or more thousand dollars for money advanoed ,
|| as aforesaid, available as an asset, or of more then nominal
j! value. That among the many losses sustained by said Works,
!; from its transactions with the Worth American Company, was a
|j claim for two hundred and ninety-one thousand dollars for
j! apparatus manufactured, for which said Works renelved in
jj settlement but tho one hundred and forty-six thousand dollars'
jj wortth of Worth American bonds, as aforesaid. That up to
|l 1896, the business of said Works, notwithstanding defendant’s
!j efforts to make it a success, and the large losses he had sus-
;| tained, had provod a failure throughout. That in 1894 the
I phonograph possessed substantially all of the qualities of
i modern machines, as a recorder and reproducer of Bound; but
i it had not been sufficiently cheapened to bo made aooessible
to the public as an amusement apparatus; nor had a popular
demand for it as an amusement apparatus been created; nor had
It proved a commercial suqoess for dictation purposes, or aB
a substitute for stenographers, for which it was originally
intended, or in any sense as a commercial apparatus. But de¬
fendant says that from 1890 tho phonograph had been extensively
used as a commercial apparatus; and defendant, therefore, de¬
nies the allegations of the bill, that, up to 1896, the phono¬
graph had not been applied to commercial uses, or that it had
-14-
j|not boon widely adopted; the facts being that the uses to
|j which it had been applied prior to 1896 were essentially
jj commercial in oharacter, and that it had failed as a oommer-
|joial apparatus. That when brought out in 1809 and 1890, the
jjphonograph gave substantial promise of success; but the amount
jof business, which was at first largo, rapidly fell away,
'even though the machine was as rapidly being perfected, until,
;in 1893, its failure, under the T.ippinoott plan, became in¬
evitable; although, at the request of others and to save the
Lipplncott undertaking if possible, defendant then accepted
the presidency of the North American Company, and, under a
modified plan of conducting the business, did what he could
to avert its downfall. And defendant says that such downfall
was hastened, if not caused, by the American Oraphophone Com¬
pany, which upon the insolvency and death of Lipplncott, in
Kay, 1892, abrogated its contract with the latter, pirated
the inventions and improvements which defendant had made ex¬
clusively for the phonograph, and v/ent into the field as an
Independent competitor, upon a basis of reduced prices and
jwith an aggression that made impossible a continuance of the
talking- machine business under the conditions and prloes con¬
templated by the North American licenses. That the cost of
phonographs when sold to the public under the Lipplncott plan
was about one hundred and fifty dollars each, while customers
were required to pay a rental of forty dollars per year for
those that were leased; whereas, by reason of the competition
which the National Company has met, its three most popular
forms of machine ate sold outright to the publio for ten,
twenty and thirty dollars, respectively, while none are leased.
That the Notth American Company waB plaoed in the hands of a
receiver August 31,1894, and its assets sold to the National
-15-
ijphonograph Company, through defendant, on or al>out February 8,
j|1896, shortly al'ter the latter's organization; and that, there¬
upon, said National Company proceeded, as owner of the Edison
i patents and of others thereafter purchased, to build up a
phonograph business throughout the United States and Canada
upon substantially the lines that had boen adopted by said
lithe American Oraphophone Company. That practically no phono- j
|i graphs were manufactured for said the North Amerioan Company, j
by said Works, after 1893; nor was the manufacture of phono- j
I graphic apparatus resumed for said National Company in any !
!j substantial quantity until 1897, and then only in a small woy. j
;jHor had it, in 1896, an is allogedin the bill of oomplaint,
jbeoorae apparent that the suooess of the phonograph business
j| was assured, nor was ouch success assured before about 1899.
j! Although, during the insolvency period of the North American
I Company, as stated in paragraph 22 heroin, considerable orders j
| for phonographs were reooived by said Works, and filled for
the Edison United Company for its foreign trade, but in no sudh
quantities as to constitute an adequate business for said
Works. That, during sueh period, however, defendant found or
| created for said Works an amount of profitable business en-
! tirely aside from phonographs or phonographic devices, for
which, between February 28,1894 and February 29,1904, said
Works was paid over nine hundred thousand dollars; and that
it was chiefly through such business that, for the three
years prior to 1897, said WorkB was enabled to survive as a
going concern. That said Works was at all times insolvent
between about 1892 and August, 1897; and was than only rendered
solvent by the issue of its bonds to the amount of three
hundred thousand dollars, which were given defendant in ex¬
change for demand notes, to a like amount, whioh had been given,;;
-16-
him for money advanced to said Works. That, at all times
jlduring Baid period, if defendant had demanded payment of aaid
.notes, the entire assets of said Works must have teen sold to
jlaatisfy such claims. But defendant says that, instead of
j
jforeolosing his said claims, as he might have done,he has
sought to sustain said Works as a going concern, and has, at
| jail times, done his utmost to save, maintainand make profit¬
able the business of said Works, And defendant says that the
North American Company, the previous owner of said Kdiaon
patents, having become insolvent and unable to oontinue tho
phonograph business, it became ncceosary to organize a new
company to take up such work; and that, but for some ouch
company, the Edison Phonograph Works would have loot the en¬
tire benefit of its manufacturing license under said patents.
Defendant further says that 3aid Edison Phonograph Works had
|no license beyond that of a manufacturing right and that it
had never acquired the right to use, leaae or sell phono¬
graphs or phonograph appliances or to otherwise exploit the
phonograph business, as the bill of complaint implies; and
that said Phonograph Work3 could by no possibility have been
deprived of any of it3 rights go long as the new owners of
the Edison patents delegated to said Works the work of manu¬
facturing under those patentB to which said manufacturing
license applied.
Defendant further says that the manufacturing of phono¬
graphic records would have been given to said Works, in 1897,
even though said Works had no such manufacturing right, had
the art of making suoh records been so perfected as to have
reftdered their manufacture profitable to said Works. Defend¬
ant says that when the National Phonograph Company began mak¬
ing records in 1897, he was attempting to cheapen the prooess
-17-
ij
;|©f their manufacture by moulding great numbors of duplicates
from a single master reoord; but that auoh prooeso, aatiB-
|faotory as it has oinoc proved, was not satisfactorily de-
Ivoloped, in a eommeroial oenoo, until about 1901, and that
jduring the preceding four years a large amount of experimen¬
tation and experimental manufacturing had been necessary, all
I he
'of whioh^had antioipated; and being mindful of the large
jlosaes said Works had sustained in its part in the develop-
jlment of tho phonograph in the years 1889-1893, defendant would
Ij
jjaot allow said Works to undertake the manufacture of phono¬
graph records upon suoh terms and for such remuneration as
I were prescribed by its said manufacturing llcanse. Defend-
| ant further soys that said Works was not equipped for ex-
jperimental work, and that it has never undertaken ouch work,
I nor under its said manufacturing license wan it obligated
ijto manufacture apparatus that had not been definitely stand-
jardized and reduced to a definite manufacturing basis. And
i defendant says that in the development of the moulded reoord
liand the process of its manufacture, said National Company
j accumulated a large experimental and manufacturing plant for
j such purposes, and that thereofter it would have been dis¬
advantageous to both of said companies, if not wholly imprac¬
ticable, to have transferred suoh plant and business from the
national Phonograph Company to said Works. And defendant
says that, in the absence of any licenoe right on the part of
said Works in that behalf, and the inconvenience and diffi¬
culty which would have attended the transferring of the work
of reoord making from the National Company to said Works,
suoh manufacturing was, with the full knowledge and acqui¬
escence of the dlreotors, John E.Searles and J.T.McCheoney,
who were then members of the Board of said Works as repre-
-18-
jjacntatives of said International Oruphophone Company, left
jjundisturbed in the hands of said National Company*
XX. Defendant admits that said National Phonograph
Company was organized January 27,1896, to engage in the manu¬
facture and 3ale of phonographs, and appurtenant apparatus and
jdevices, as stated in paragraph 20 of tho hill of complaint;
|and that its capital etook of ten thousand dollars was divided
into shares of one hundred dollars each, and that certain of
its shares were issued to persons in amounts as therein
stated.
I XXI. Defendant denies that at the time of its organi¬
zation all of the oapital stock of the National Phonograph
Company "except the shares necessary to qualify its director*!,
were issued to himself, "and over sinoe has been and now is
jowned by him". Defendant, however, says that upon the fail¬
ure of the North American Phonograph Company and the sale
!of its assets, the reorganization and rebuilding of the phono¬
graph business devolved wholly upon himsolf, and that, but
for his efforts in this behalf, the manufacturing rights
of the Edison Phonograph Works would have been wholly lost to
that company. That if the Edison patentshad been purchased
at the sale of the North Amerioan Company’s assets by its
ohief competitor then in the talklng-maohine field — the
Amerioan Graphophone C omp any ~ only graphophoneB would there¬
after have been manufactured by Bald co.npany.and thereby the
furthor flanufaoture of the phonograph would havB been sup¬
pressed, and aaid Work3 would have been deprived of all
further opportunity to manufacture phonographs under its said
.19-
manufacturing rights. And defendant further says that he
does not own any part of the oapital stock of said National
Phonograph Company; nor haa he at any time since the organi¬
zation of said oompany in 1896 controlled or directed its
operation and management further than to put forth his ut¬
most endeavor to improve the phonograph as a scientific appa¬
ratus and to enhance and improve its marketable qualities;
jj nor has it been hio policy to undertake the management or
jj oontrol of companies organized for the exploitation and sale
jj of his inventions; nor has ha done ao except in special in¬
stances whore he oould not escape the assumption of suoh
| duties. Defendant had never been an officer of the National
j; Phonograph Company, a 3 alleged in the bill of complaint;
jj and
j| but defendant believes that said company has been wcll^ off i-
jj ciently managed, although he has but a limited knowledge
jj of the details of its business affairs.
j! XXXI. Defendant admits that, since 1896, a large buai-
I ness in the manufacture and sale of phonographs and phono¬
graph supplies has been developed; but he denies that in
1896 any Such large demand for phonographs or phonographic
devioen had been created, or that any such large business
existed prior to about the year 1899; and ho again denies,
as he has already done in paragraph 19 of this answer, that
any such large demand or business was or at any time has
been due to the adaptation of the phonograph to "commercial
uses", as stated in paragraph 22 of the bill of oomplaint.
And defendant denies that said Works has at any time been
managed otherwise than for the best interests of all of its
stockholders; and ha denies that, sinoethe incorporation of
-20-
tho National Phonograph Company, said Works hao been so
operated "as to divert to the aaid National Phonograph Com¬
pany a large part" , or any part whatever, of the profits
which should "have been derived by the oaid Work b".
Defendant admits that large orders for the manufacture
of phonographs and appurtenant devices have been and are now
being received by oaid V/ork3 from the National Phonograph
Company; but defendant denieo that the filling of ouch orders
hao been unprofitable to oaid Works, or, that thereby said
Works has been prevented from accepting and filling other
orders from whioh larger profits would have been derived.
On the contrary, defendant say3 that at no time has said
Works been able to secure other equally advantageous orders.
Defendant prior to 1896 and from that date to the present
time has found, created and given to said Works much other
business from which large profits have been derived by oaid
Works; but defendant says the material prosperity v/hioh said
Works now enjoys as a manufacturing concern has been almost
wholly due to tho large business created by said the Nation-
, al Company, and that but for the large orders thuo received
from said National Company, said Works would have con¬
tinued in the insolvent and moribund condition to whioh it
had fallen in 1896. And defendant says that while the
factories of said Works were thus supplied with large and
profitable orders for the manufacture of phonographs and ap¬
purtenant devices, to the extent of its manufacturing fa¬
cilities, none of this work has been done at a price Ibbs than
said Works was entitled to receive and would have received
therefor under and pursuant to the terms of its said lioense
agreements, namely, its license agreements with the North
-21-
American Phonograph Company and with iho Kdiaon United Phono¬
graph Company. That up to March 1,1904 and thereafter, said
Worka reoeived from aaid the National Company for all appa-
ratua manufactured hy the former for the latter, the coot of
labor and material together with the allowance contemplated
in oaid contractu for general expenses, to which waa added,
for all theperiod between 1096 and March 1,1904, an average
profit bonuo of 3ubatantially twenty per oont. upon the coot
of all au oh labor and material; but while ouch bonuo averaged
about twenty per oent. between 1Q96 and March 1,1904, auoh
bonus was reduced to fifteen per cent, for the yearo ending
March 1,1901 and 1902, and to eighteen and one-half por cent,
for the year ending March 1,1903, and again to fifteen per
oent. for the year, ending March 1,1904. Nut defendant sayo
that all ouch reduced profit bonuses, prior to December 18,
1903, were paid and received with the knowledge of, and without
objection on the part of John E.Searles and J.T.MoCheoney,
who were, and for several years had been continuously direct¬
ors of oaid Works, as representatives of complainant heroin;
and defendant says that oudh profit bonuo was so reduced and
aoceptod by aaid Works for reasons as follows: That when
the phonograph business was roouined by tho National Phono¬
graph Company in 1896, after the failure of the North Ameri¬
can Company and the sale of its assets, it become obvious
that the phonograph must be wholly reconstructed and so cheap¬
ened as to be made aaoeceible to the public as an amusement
apparatus; that to thin end a large investment in special
tools for its manufacture beoame necessary; that it was in¬
cumbent on said Works to provide itself with all suoh tools,
apeolal or otherwise, without oh urge either to the North
-23-
II
American Company, or to the purchaser of the North American
rights, or to the Edison United Phonograph Company; but that
said Works was wholly without the neoeooary means for. under¬
taking such work, it then being in debt to thio defendant for
more than three hundred thousand dollars, for money advanced.
And that, to meet the necessities of the oase, said the Na¬
tional Phonograph Company and the Edison United Company to¬
ll gether expended about sixty-five thousand dollars for the
|j oonstruction of ouch special tools as a preliminary to the
jj manufacture of tho several types of phonographs which have
since been raanuf actured by said Works and sold by or through
said National Company, fhat the cost of such special tools
would have been far less than became necessary if a single
type or form of phonograph could have satisfied the require¬
ments of the phonograph business; but that to meet the com¬
petition of other concerns than in the talking-machine field,
i several sizes and types of machine became indispensable to a'
successful prosecution of the phonograph business. And de¬
fendant says that over fifty- three thousand dollars of the
| sixty-five thousand dollars ao expended for special tools
|l wa3 contributed by the said National Phonograph Company, and
the balanoe of over eleven thousand dollars of said amount
by said the Edison United Phonograph Company. And defendant
believed, and still believes, that it was but just that paid
'companies should be recouped, in part at least, for such
outlays by a reduction of the amount which said Y/orks would
otherwise have been entitled to receive from its profit bonus
i of twenty per cent.
And defendant further says that in the reconstruction of
the phonograph to meet the requirements of competition in the
talking-machine business, as aforesaid, and in so cheapening
its manufacture aB to make it accessible to the publio as an
-23-
inexpensive amusement apparatus, there have been added to
suoh machines and to devioea appurtenant thereto, 3inoe 1396,
numerous important improvements, of hio ov/n invention and
of the invention of othera, which have been purchased by and
which belong wholly and exclusively to said the National
Phonograph Company. Defendant oayn thut, by and under ita
said licence agreement u, said V/orka acquired no right,, ex¬
clusive or otherwise , to manufacture suoh improvements as
have boon invented by defendant, or an have been purchased by
him from others, or which have been purchased from him or
from others by the National Phonograph Company since the
receiver* 3 sale of the Worth .American Company’s assets, name¬
ly, ainee TTsbruary 3,1396. And defendant believed, and
still believes, that, respecting the great number of phono¬
graph; devices manufactured for said National Phonograph
Company by said Works wherein were included improvements con¬
stituting large and material parts of Buoh structures, said
the National Company, a3 exclusive owner of such improve¬
ments, thereby became entitled to a reasonable reduction of
the amount which said Works would otherwise have boon ontitl-
its
.ed to receive from said profit bonus of twenty per oent.
And defendant further says that, to meet moot the com¬
petition of other concerns in the talking-machine field, it
had become neoesoary to the success of the National Phono"
graph Company’s business to so far reduce the prioe of pho¬
nographs to the public that there was but a small margin of
profit after deducting the cost of manufacture and selling
oommiasions; . and -that to meet suoh competition it was the
privilege of said Works to agree to and accept 3uch reduc¬
tions from the said profit bonus of twenty per oent. as might
-24
bo necessary to encourage the construction of the oheaper
forms of phonographs, which, otherwise, said the National
Company might have found it impossible or inexpedient to put
upon the market.
Defendant denies that he has, in uny instance, caused or
attempted to cause said Works to refuse other manufacturing
orders than those of the national Phonograph Company, where
such orders would have been profitable or advantageous to
said Works; nor, in accepting manufacturing orders, has said
Works in any manner discriminated against the Edison United
Phonograph Company. JTor has said Works at any time refused
to fill orders for said Edison United Phonograph Company,
notwithstanding the fact that by reason of the small number
of machines which it required for its foreign trade, such
orders were often unremunerativo and wholly unprofitable to
said Works when filled at the prices for which 3Uoh maohinoo
were built in large quantities for said the National Phono¬
graph Company. Defendant, however, is informed and be¬
lieves that said Edison United Phonograph Company has from
time to time eiven orders for the manufacture of phonographs
to others than said Works, ond that much of the business to
whioh said Works was entitled under its contract with said
oompany has boen diverted from it. And defendant further
soys that, owing to the failure of the Edison United Com¬
pany to maintain its patent rights in foreign oountries by the
payment of annual and other taxes and by working the in¬
ventions ,as required by the laws of the varioua countries
in whioh such patents were granted, most of its said patents
long since beoame forfeited and lost to their said owner;
and that by the failure of said oompany to maintain its said
patents in force and assort its rights against infringers,
under such patents aa hnd not become so forfeited, itc ter-
; rity han been invaded by many infringers and competitors, and
|s that thereby aaid Works has been deprived of large gains and
|| profits which, otherwise, it would have derived. Tint while
|| said Works has in no case refused to fill orders of said
I Edison United Phonograph Company for phonographs or phono-
I graphic apparatus at prices for which such apparatus was
I supplied to the ITution.il Phonograph Company, defendant says
jj that said Works would have been justified in charging said
! Edison United Company a materially larger price for suoh ma-
| chines, from the fact thut many important improvements, ex-
| elusive ly owned by said the national Company, were embraced
| in their construction; that such machines could not have been
i built for said Edison United Company without infringing many
I patents exclusively ov/ned by the national Company to v/hich
the license of said Works did not apply; and that it was
only by the courtesy of said Pation.il Company that said
Works was permitted to manufacture such apppjratua for said
Edison United Company.
Defendant says that during the period between the years
1090 and 1900, said Works manufactured phonographs and phono¬
graph supplies for said Edison United Phonograph Company in
considerable quantities, and that in the aggregate said
Works received therefor §306, 367.02, but that with the ex¬
ception of the two years end ingrf opeotively , February 20,
1094 and^Fcbruary 28,1399, such orders as were received and
filled, were received with groat irregularity and were small,
and that such business was undesirable, if not wholly un¬
profitable to said Works. That, for the year ending Feb¬
ruary 20, 189^, said Works received for work done for said
-26-
Edison U;..U-:id Company .$04,134.07, and for the year ending
February 20,1899, $112, 121. 18; hut, for the year ending Feb¬
ruary 28,1098, the amount received wac hut $8,219.94, while
that received for the year ending February 28,1900 wao but
b'15, 650.60. '.Chat since February 28,1900, little or no
manufacturing has been done by said Works for ocid Edison
United Phonograph Company, beoause said Company either did
no business, or because it employed other manufacturers to
supply its orders; and defendant further sayG that said
Edison United Company is now defunot, and has been since
Mar oh 31,1904, when its charter was forfeited for non-pay¬
ment of its corporate taxes to the State of Hew Jersey, and
for various other acts and omissions which were inconsistent
with the maintenance of its corporate organization and exist¬
ence. And defendant denies that said Edison United Phono¬
graph Company, or others acting for it, have at any time
bought phonographs or phonographies apparatus from said the
National Phonograph Company, at prices exceeding those for
which ouch apparatus was sold in the general market; and he
denies that oaid Edison United Company, or others for it, have,
in good faith, attempted to buy, under any ouch conditions,
any ouch apparatus from said National Company.
XXXII. Defendant admits that by and under the Baid
license agreements of Huy 12,1888 and March 11, 1890, ref erred
to in paragraph 23 of the bill of complaint herein, the
Edison Phonograph Works did acquire an exclusive right to
manufacture phonographs and oertain phonographic appliances
and supplies, and that oaid Works is equipped with suitable
-27-
appliances for the profitable manufacture of such apparatus.
But defendant denies that auid Worts acquired or ever at¬
tempted to acquire the right, exclusive orotherwiso, to
manufacture phonographic records, so-called, or the wax from
which such records are made. On the contrary, and as 1b
more fully stated in paragraphs 10, 11, 12, 13, and 19 here¬
in, defendant soys that the right to manufacture phonograph
records was speoificully reserved to the licensee companies,
the Worth American phonograph Company and the Edison United
Company, and to their sub-licensees, while the wax of which
3ueh records are wade is manufactured by a upoaial process
to -which the raunuf acturing rights of said ’.'fortes did not and
do not appertain or apply. And defendant denies that ho, or
any one in. his behalf, "had caused the said Works to pur¬
chase largo quantities of the said records from that com¬
pany [the national] at prices largely in excess of the cost
of manufacture" ; nor has said Works had occasion to, nor
has it purchased, of said national Company, phonograph records
in quantities, large or small, or at a price excessive or
otherwise. Defendant further says that all such wax as was
made for the uuo of the Edison Phonograph Vforks, the north
Amorioan Company, its licensees, and their customers, and
for the Edison United Phonograph Company, its licensees and
their customers was, fluring the period from 1888 to 1896,
manufactured by said the Edison Manufacturing Company; and
that no such wax, during such period, was manufactured by
said Works. But defendant says that, from some time in 1896
and thereafter, all such wax was manufactured by said Edison
Phonograph Works; and that all of the wax used by the nations L
Phonograph Company, in its business of record making, from
the organisation of said company in 1096 to the present
time has been made by said Worko and oold by it to said
JTational Company, and at an average net profit to Bttid V/orka
of more than twenty per cont. And defendant further says
that the manufacture of all 3ucli wax by the Edison Manu¬
facturing Company, between Mar oh, 1090 and 1096, and all
wax thereafter manufactured by said Work a was made with the
knowledge and acquiescence of the two persona, who, as rep¬
resentatives of oaid International Graphophone Company, were,
until December 10,1803, membera of the Board of Directors} of
oaid Works, aa aforeaaid; and that prior to Karoh, 1090,
the making of ouch wax by the Edison Manufacturing Company
waa an established practice. And defendant further oayo
that in 1896 auch wax making waa transferred from the Edi¬
tion Manufacturing Company and was taken up by aaid Works
beoaune the factory of said Edison Manufacturing Company was
not conveniently accessible to aaid Worko or to the offices
of the national Phonograph Company; und because said oompany
had been organized chiefly as a selling company, and was not
oonvoinently equipped for such v/ork; and, further, because,
after 1096, it was assumed that a degree of privacy which
it waa desirable to maintain in this branch of the business
could bo as well observed at oaid Works as at the factory of
said Edison Manufacturing Company, and at a material saving
in the cost of manufacture. That during the experimental
period in the development of the process of such wax making,
the manufacture of ouch wax was delegated to said Edison
Manufacturing Company chiefly because it wan assumed that, by
by reason of the isolated location of said company's worko,
the privaoy of such process might be more securely guarded
-29-
against
^disclosure to competing concerns,
Defendant further says that said Edison Manufacturing
Company was organized in connection with and to exploit his
moving-picture inventions and other inventions which were
wholly unrelated to the phonograph or phonographic ap¬
pliances, and that tho operations of that company have, from
the time of its organization, bean confined to suoh other
business, except as it did manufacture ouch wax for phonograph
blanks and records up to 1896, as aforesaid. But defendant
says the manufacture of such company's moving-pioture and
other apparatus has been chiefly given to and done by said
Edison Phonograph Works, and at prices V7hich have netted
much larger profits to said Works thah said Edison Manufac¬
turing Company has derived from the making of ouch wax.
Defendant further says that said National Company would,
itself, he entitled to make the v/ax for all records which it
manufactures, and that said National Company would have made
and would now make its own wax for all such records, but for
the deDire on the part of said company to avoid all manu¬
facturing that could or may be delegated to said Works.
XXIV. Defendant admits that, as shown by the books
of the Edison Phonograph Works, the stock of said Works is
held in amounts and by holders as stated in paragraph 24 of
the bill of complaint, except that the holdings of the In¬
ternational Oraphophono Company and of Charles Batohelor,ae
appears from said books, are 1430 and 248 4<l/l00 shares, re¬
spectively. But as defendant is informed , and being so in¬
formed believed, said International Oraphophone Company is
no longer the lawful, actual or virtual owner* of said 1430
shares of stock, or of one-fifth of the entire stook of said
-30-
Works or of any considerable part of naid stock; and defend¬
ant aoko that complainant be required to make otriot proof
as to its present and pant ownership of said stock, and to
whom it now is or has been hypothecated, and to whom and for
what amount of money it now is, or hao been during the past
two years, pledged ao collateral.
XXV. Defendant admit o that pursuant to the agreement
between himself and the International Oraphophone Company,
particularly referred to in paragraph 14 of the bill of oom^
plaint, two persons were forthwith selected, upon the execu¬
tion of said agreement, by said oompany as its representatives
on the Board of Directors of said Works, and that they were
forthwith elected members of said Board, as were three other
persona who had been likewise selected by defendant; but
defendant denies that such persons, selected as aforesaid by
the International draphophono Company, ao its representatives
upon the Board of Directors of said Works, wore John 33.
Searlos, then and thereafter until about December 18,1903,
president of said International Graphophone Company, and J.
T. McChesney; but defendant admits that said Searlos and
Uo Cheoney were so elected, in 1897, to represent said Inter¬
national Craphophone Company on the Board of said Works, and
that they so continued as ouch directors and representatives
until about Deonmber 10,1903; that upon the retirement Of
said Searles and l\c Cheoney from said Board, on or about
December 18,1903, said the International Graphophone Company
suggested and requested that Stephen V. Boriarity and Oliver
J* Wells be eleoted to said vacancies; that shortly there¬
after the name of said Moriarity was withdrawn, for Whloh
-31-
wao substituted that of 0. H. Morrison, who was then and
still is oooretary of said International Graphophone Company;
and defendant admits that he has refused to aid in or give
countenance to the election of said Morlarity, Wells or
Morrison to the Board of Directors of said Y/orkn,and this
notwithstanding his 3aid agreement with the International
Grapho phone Company that, so long as each should remain the
owner of a one-fifth part of the oapital stock of said Works,
three of its five directors should be of his own selection
and the other two of the selection of said company; and de¬
fendant says he still refuses to aid in, vote for or coun¬
tenance the election to said Board of said Morrison or said
Wells, or oither of them, or for any other persons as di¬
rectors of said Works if they be selected by said Inter¬
national Graphophone Company, and will so refuse so long as
the present attitude of those in control of said last-named
company towards said V/orks shall continue. Defendant is in¬
formed and believes that the prcoont attitude of said Inter*
nations! Graphophone Company and of those related to it#
affairs io hostile not only to himself hut to the success of
said Works, and that the hoot interests of said Works would
not he ouhoerved hy the election of said Morrison and Wello
to its Board of Directors; that said persons would he wholly
incompetent to assist in directing the affairs of said Works;
that they have no material interest in the welfare of «»id
Works, and, as defendant believes, their election to Bald
Board is now nought for no othar or hotter purpose than to
Interfere with the legitimate affairs of said Works and to
embarrass, annoy and create discord among its offioors and
employees. And defendant says that if ho were to support the
-22-
i| election of said iforrioon and Wells, suoh action would bo
jj contrary to hia boot Judgment, ainoe, by oo doing, as he be-
| li'JVOB, he would oauue material injury, not only to hio hold-
j Ings in said Works, but an well to those of all tho other
! stockholders. And defendant further says that thoro are
! other stockholders than himself, who, under tho clrourautanoeo,
Ij n°w object to the appointment of directors to the Board of
j; said Works as representatives of said International Orapho-
ji Phone Company; and that as an officer, atookholder and di-
|; rootor of said Works he cannot ignore the wishes of ouch othor
j! atookholdors in this behalf.
|j And defendant is advised and believes that said agreement
|l of March 11, 1090 is illegal and aguinot public polioy in so
:i far ao it would require hia, against hia beet judgment as a
| stockholder, director and officer of said Works ,to vote for
ii or support the election of any person or persons to its said
ij Board of Directors, whose presence or influence would be in-
|! imical or prejudicial to the bent interests of all of its
ij stockholders. And defendant is advised and bslioves that
|i said agreement is illegal and against public polioy in that
ij it would require the parties thereto, while holding but a
part of the sharea of said V/orko, to oleot and control its
entire Board of Directors, regardless of the wishes and de¬
sires of the holders of the other shares of the stock of
said company,
XXVI. Defendant asks that hio foregoing answer to para¬
graph 25 of the bill of complaint be received as hio answer
to the allegations of paragraph 26 thereof.
-33-
i XXVII. Defendant admits that under the by- law a of oaid !
j Works, it ia provided that there shall be elected at the an-
! nual meeting in May or oaoh year, five directors, and that
ainoe the reaignationo of said Searlea and Mo Chooney, said
I Board haa been composed of but three direotoro instead of
|! five; but ho a ayo that ouoh caoonoieo have thus far been al-
|| lowed to oontlnue beoause of his reluotance to advooate the
ij election of othero than nominoeo of said the International
i Gruphophone Company in pursuance of the termo of hio oaid
agreement with that company. Of Karoh 11,1890. Defendant
admits that he ia a largo stockholder in the Edison Phono-
jj graph Works, and that ho is entitled to and dooa control the
jj management of ite affairs, but he denies that ouoh control is
jj or has been exercised otherwise than for the benefit and j
ij best interests of all of its stockholders; or that any in- j
jj Jury haa arisen or is likely to arise by reason of tho exist- j
| j ing vacancies in tho Board of said Works.
XXVIII. Defendant is informed and believes that Mr.
Oliver J. Wells some timo during the month of February, 1904,
made oertain demands upon William X. Oilmore, general manager
of oeid Works, for information respecting its business af¬
fairs, and that, at ouoh time, ho sought to inspect and ex¬
amine the books, papers and documents of oaid Works; but, as
defendant 1b informed and believes, said Oilmore did not
represent to said Wells that, by the direotion of .this de¬
fendant, he was denied ouoh information or aooess to the
books, papers and documents of said Works. Defendant in
Informed and believes that oaid Wells was informed by said
Oilmore that before oomplying with His said requests and
demands he, Gilmore, wiohed to obtain the advioe of oounaelj
-ad-
that thereupon Hr. John R. Hardin was consulted, who advised
that, under the circumstances, of the oase,said Wells wao
entitled to inopeot only the gtock and transfer hooka of
Bald Works and none of ito other hooks and payors; and that
upon ouch advice said Wells waa immediately given acoosa to
said hooks.
XXIX. For answer to the allegations of paragraph 09 of
the hill of oomplaint, except a3 to so much of said allega¬
tions an may he admitted as true, defendant begs leave to
refer to hin anower to paragraph 27 thereof. But defendant
denies that said Gilmore and Randolph have at all times, or
at all, while acting as officers and directors of said Works,
been entirely subject to the control or dictation of this
defendant, or that they have managed, or that they -havevbeen
called upon to manage the affairs of said Works with the
sole purpose of serving the interests of this defendant or
to the injury of the other stockholders in said Works, or
that they have been celled upon to otherwise manage or direct
the affairs of said Works than would subserve the best inter¬
ests of all of its stockholders.
XXX. Defendant denies the allegation of paragraph 30
of tho bill of complaint, "That tho said Edison, Gilmore and
Randolph have for several years constituted the entire board
of directors of the said National Oompany", in so far as
said allegation refers to himself as a director of said oom¬
pany; and defendant denies that ho is or has been president
of said National Company. Defendant says that ’William E.
Gilmore is and has, at all times since about 1399, been
president of said National Phonograph Company, and not vice
-35-
;! president, a3 stated in the bill of oomplaint; and that, ao
jj defendant io informed and believes, there is no vice-presi-
| dent of said national Company. Defendant further aayB that
[! he ia and han been president and director of the Edison
jj Manufacturing Company, and not vioe-preoident, and that oaid
jj Gilmore is and haa been vioe-president,and not president
i| of oaid last-mentioned company, au stated in the bill of
•j complaint. And defendant denies that oaid flilmore and
jj - Randolph, while acting as directors and of floors of oaid
!j '"Rational Phonograph Company and of the Edison Manufacturing
jj Company, havo at all times, or at all, been entirely subject
jj to the control and direction of thin defendant, or that they
j have been prompted by defendant to do otherwise than would
subserve the best interesto of all of the stockholders in
their management of said companies.
XXXI. Defendant denies that the assets of oaid Works
are in danger of waste, or that any of the profits derived
from its business are or have been diverted, or that any of
its books, records or papers are in danger of destruction.
And defendant Days that the appointment of a receiver or
receivers , as prayed in the bill of complaint, oould but
load to a disorganization and impairment of the successful
and profitable business whioh said Works is now doing, and
to the irreparable injury of all of lte stockholders tmd
bondholders. Defendant says that oaid Works has, now issued
and outstanding, in the hands of bona fide holders, two
hundred and ooverty-six five per cent Interest-bearing bonds,
of a par value of one thousand dollars eaoh, upon all of
whioh interest in full has been regularly paid oinoe August 3
-36-
1897, said bonds having then been issued to defendant In ]
exchange for demand noteo whioh he had received for oaeh ad¬
vanced by him to said Works; that said Works has a full-paid
aupitul stock of a par value ofeix hundred thousand dollars,
upon all of which, excepting 1103 60/l00 chares hold and
owned by defendant, dividondo, at the rate of five per oent.
per annum, have been regularly paid from its earnings since
August 2,1899 to the present time, except that for the period
between February 2,1900 and May 2, 1901, the dividends paid
were at the rate of six per oent. per annum; and that under
a 3 inking- fund provision of said bonds, twenty-four puoh
bonds, of the throe hundred originally issued, have been re¬
tired and oanoeled from the earnings of said Works. And
defendant further says that in addition to suoh interest,
dividend and sinking-fund payments, the working oupital and
manufacturing facilities of said Works, since January 1,1898,
have been increased from its said net earnings to the extent j
of nearly four hundred thousand dollars; and that if said
Works can be left in the undisturbed control of its business
affairs there is no reason apparent why it may not continue
to retire its bonds under its sinking-fund provision, to
pay in full the interest upon its bonded indebtedness, to pay
dividends upon its capital atook equal, at least, to those
already paid, and to materially add to its working oapital
and manufacturing plant. And defendant further says that
the future success and prosperity of said Works is threatened
only by the hostile and unreasonable attitude of this com¬
plainant.
All which matters and t'ningD this defendant is ready to
aver, maintain and prove an this Honorable Court shall direct;
-37-
Feb. 16,1905,
International Graphophone Company Suit.
Chas. X. Buckingham, EBq. ,
38 Park Row,
New Yoik, N.Y. ,
Dear Mr. Buckingham
I have gone over the proposed answer
with Mr. EdiBon and he is very much pleased with the way you havs
prepared it. He makes two suggestions which you can embody if
you think desirable. On page 46 he 3uggestB as an additional
ground for complaint against the Edison United Company, that that
concern made no effort to maintain its patents by paying taxeB
or otherwise complying with the requirements concerning working,
and therefore practically abandoned its field. On page 58, he
suggests also, that it might be stated that the appointment of two
direotors representing the International Graphophone Company would
be objectionable to other stockholders, whose interests he should
consult.
Ab soon as the answer iB written out, please send iijr
to ms and 1 will have. it executed.
I return herewith the original copy of the answer,
copy of the bill of complaint, and also the printed volume of
contracts with the Edison United Company.
EID/ARK.
Yours very truly,
Legal Department Records
Phonograph - Case Files
George Croyden Marks v. Pathe Freres
This folder contains material pertaining to the suit brought in France by
George Croyden Marks against Pathe Freres (Compagnie Generate des
Phonographes, Cinematographies et Appareils de Precision). The case was
initiated in 1 904 and involved the patents of Fernand Desbrtere on molded
records. It was a companion suit to Compagnie Frangaise du Phonographe
Edison v. Pathe Freres. The selected items consist of correspondence from
the period 1 908-1 91 0 concerning attempts to settle the litigation. Among the
items not selected are court documents and correspondence regarding
alleged infringement of the Desbriere patents at the Pathe factory. Related
material can be found in the archival record group, National Phonograph
Company Records.
PRIVATE AND COHMKENTIA&
_ .imti ilstC ! 1908. _
V: /'"W
■ D;\Yvi;R„Esqv';
T-;'.v ;.:0'R‘,AvH g i
• I- have submitted, to my colleagues af our Board
of Directors the propositions which we discussed together
ora»ds”«ix during my visit in Hew York.
m i lan i9og My colleagues would he glad, considering our '
mbre <iu jur>. . nor* concur, very important commercial relations in the United States, '
— j^— ■ that the Deshrieres lawsuit should cease to exist between
We are however placed in a rather awkward posi-
tion, towards .the friendly German houses who are actually combating— ■
with chances of success your patent in Germany; for in recognizing
'■ your patent, not pnly do we abandon them, but we furnish you 1
against them a very important trump, in the lawsuit of nullity on
the German Patent.
Nevertheless, we esteem that the interest of our Company,
is not to combat your patent, for an article which will disappear nX
) in a short space of time. ■ /
j We consequently will agree to recognise/ your patent and
be licensed by you until it ends. ;
As concerns the proposed royalty which it was proposed
should commence on the 1st. of August 1909, we should prefer to pay j
at once a nominal sum and avoid the complications of an. account to !
be kept for the cylinders made and sold.
Basing ourselves on the offer Deshrieres made us in his
letter and of which I send you copy, we think that the sum of !
10,000 Prancs could be considered as equitable. We firmly believe !
that this amount is superior to the one which we should have to pay. 1
you with the proposed royalty, during the existence of the cylinder’ I
with us+ i
To conclude, we would accept the following transaction:- i
The Deshrieres lawsuit would be abandoned each party I
supporting its own expenses and legal fees* x I
tEAidiTsaarriioo oka sraAvrara
„.We, would, recognize the Destrieres? parent yand;>would he its
licensee until" it" ends* /'
We would pay over to you the sum of 3?rs» 10*000*'.
We trust that the a'bove propositions. .willrhe metiahy^you
in the same friendly spirit as that in .which ;.they~ .are-, ten'dered* ■
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V
NATIONAL PHONOGRAPH OOMPANY
• " June 29, 1908.
A. IJfattn, Bsq. , Managing Director,
Pathe Preres,
98 Rue de Richelieu,
Paris, Pranoe .
Dear Sir: ■ 'y
1 have your- letter of the 1st Inst,, proposing on /behalf
of Pathe Preres the ■ settlement of the suit based, on the Desbriere ■
patents in Pranoe and without prejudicing in any way our rights
for the prosecution in Germany of the suite on the corresponding
patents, said settlement being the following:
1* Desbriers latortsuit in Pran os against Paths Preres will ;
be abandoned, eaoh party paying Its own expenses and legal fees.
2, Paths- Preres will reaognlse the validity of . the Desbriere
patents and will be licensed under the patents so long as they
shall run. . , ■ •..// '
■ 0.,. Paths PreroB will pay us the sum of 10,000 Prancs in
■full, settlement for all' damages for past infringements of said
patents and: for. future royalties thereundep.
In reply X beg to advise you, on behalf of tho Edison inter¬
ests that your proposition is aooepte.d.
I will be much obliged if yoifwill take up this matter with
my attorneys in Paris, Messrs. Brandon Bros., 69 -Rue de Proven os,
..who will prepare the neoegsary papers and forward them to me for
2. 6/29 /be i
E. A* Ibatte,
approval.
I am glad that thiB matter has been disposed of, and hope that
the friendly spirit now existing be tween- jitur. two interests will
'continue.
With asauranoes of my personal regard, believe me.
Yours very truly,
TO3/IWW
Chairman Executive Conmittee,
, Messrs. Brandon Brothers,
•'"/ 59 Bus do Provence,
Paris, Branoi.
Gentlemen:
In reference to the Dosbriera suit, Mr. E. A, IVattB,
Managing Director of Pathe Prores was in this country recently
in connection with moving picture matters, and I proposed to him
that the Desbriere litigation might be bottled'. He has proposed
and wo have aooepted a sett lament on the following basis:
1. Hie Desbriere suit will be abandoned, . each party paying,
its own expenses and legal fees. , .
2. Pathe Ereres will recognise the Deabriire' patents and
will be licensed thereunder so long as the patents. run,
3 . Pathe Preres will- pay us the e^am of 10,000 Pranos in
full settlement of past damages and for future royalties.
I have suggested to Ur., IVattB- that he should see you in
order, that you may prepare the' neoessary papers to oarry this
understanding into offodt,- Por-my convenience, ■ I will.be much
obliged if you will draw up the necessary document- in both English
and Branch, The settlement! have made is as good as I ■ could -
expect under the ciroumatanceB. Tha Decbrlere suil has always
boon a g ee&r. e-tp^nse and 1 htvr felt Vat the outcome was dubious.
Pur thermpre , It is probable that we will withdraw our manufuoturitjif
8* 6/?.9/b8< - Brandon Bros*
NATIONAL PHONOGRAPH OOMPANV J3X-UB .
operations in France, and tho granting of a lloense to Bathe win
oomply with the working requirements and keep tho patents in force
The recognition of the patents by Pa the will enable us to proceed
more effectively against other infringers. Furthermore, the
effect of Pathe recognizing the patents in Franoe will no doubt
be helpful to us in Germany*
Your early attention to this matter will bo appreciated.
Yours very truly,
FhD/lWVY
Chaixmian Ereoutive Committee.
BRANDON BROTHERS
PATENT OFFICE
Paris, SO, rue ,/e Provence, (IX)
July 7th 1908.
WESTERN UNION CODE
TELEPHONE 154-83
Dear Sir,
F. L. Hyer Euqt. ,
National Phonograph Co:;
Orange, N.Ji A
Brandon Brothers _ i|...| ' ' ss.rueoe province
E,t,b- 1850 • Paris...*; July si8tf 190a.
Patent Lawyers erinuy “■
ProtectionofIndustrialProperty
cable adoress."abdicant Paris" Frank L. Dyer, Esq. , ^RECESVED^Si
we.te.mu.ln .ope Edi s on Lab oratory , [ AUG 101908 |
Telephone 154*23 Orange, ^ yFRAMK L DYEff. J .
Dear Sir,
MAKES v. PATHE. Mr. Desbriere, to whom we communicated
your letter- of the 29th- of June last seeing that he owns an
interest of 10^ which has been promised to him hy Mr. Marks
in any damages to which the Pathe Company may he condemned,
has written us a letter dated the 25th inst. , of which the
following is a translation: -
"I duly received your favour of the 22nd inst., "
"enclosing a letter of Mr. P. L. Dyer dated Orange 11
"June 29th, 1908." i.
"I wish you would please send to the National Phono- »
graph .Company a literal copy of what, follows , and »
..f-dyf 86 aQ that it has" been sent, sending me a trans-"
"lation thereof into English."
Mr. P. Desbriere regrets that as far as he is con- "
cerned, he cannot accept the draft of compromise "
contained in Mr. PV X. Dyer’s of June 29th 1908, »
between the Pathe Co., and the National Phonograph »
Co.-, although. he holds that his interest is the same"
as that of the latter Company, who are certainly not "
exactly posted in regard to' the facts relating to "
'the suit vAiich is pending. Mr. P. Desbriere being "
owner of an eventual right to 10% in the profits re-"
suiting from any legal proceedings against the Pathe"
Oo, or from any compromise arrived at with this »
Company, holds that the proposed sum of Prs. 10,000 "
"is absolutely insufficient to indemnify him, by the "
part thereof which would go to him for the care and "
attention whioh he has given to the suit which is "
pending and the losses which he has incurred owing "
"to the infringement. "
Prank L. Iyer, Esq.
"Mr. G. Crpydon Marks for a, consideration much lower"
"than their value, owing to this very infringement, "
"and he' only consented to do so, owing to the inten-"
"tion, (which was likewise that of Mr. Marks) of ob-"
"taining a compensation hy means of the suit which "
"is at present pending."
"Besides, as proposed,, the transaction is me**e®ver "
"inexecutable for the Pathe 0° have infringed the "
"patents of Mr. Besbriere from 1901 to 1903, (date "
"at which they were transferred to Mr. Marks). Mow,"
"if the Pathe C° were to admit their validity, Mr. "
"P. Besbriere would hecome' entitled to claim legally"
"an indemnity for the infringement which concerns him"
"alone and which he fixes at Prancs 100,000, at the " -
"rate of Prs. .0.10. fori each cylinder manufactured, "
"this being the minimum: commercial profit illegally "
"charged by the Pathe 0° from 1901 to 1903."
"The sum of Prs. 10, 000. proposed by the Pathe C° in"
"settlement of past damages, cannot evidently apply "
"to the period when Mr. P. Besbriere was sole owner "
"of his patents, unless it be with his consent. If »
"one considers also this sum as an indemnity for the "
"period extending from' 1903 to this date, and for "
"future manufacture,' the result is a purely nominal "
"royalty per; cylinder considering the number of »
"cylinders manufactured by the Pathe Company and the "
"remaining term (8 years.) of the patents of Mr. "
"Besbriere. This annuity (Mr. Besbriere probably "
"means indemnity) thus fixed is of a nature to de-"
"stroy the value of the patents of Mr. Besbriere »
"in Germany far more than to reinforce it, for the »
"judges will understand that this transaction .con- "
"stitutes simply an extra-legal and voluntary agreement"
"which is not confirmed or ratified by payments cor- "
"responding to the importance of .the business and "
"damages sustained. Purthermore, the' Path6 C° who only"
"undertook the manufacture of discs in order to es- "
"cape the consequence of the pending lawsuit and has "
"not succeeded in such manufacture, will certainly "
"revert, after compromise, to the manufacture of "
"cylinders, and the annuity (Mr. Besbriere probably "
"means indemnity), proposed will become- still more out"
"of all proportion. "
"This draft of transaction is-, besides, irregular as "■
"far as concerns Mr. P. Besbriere, . owing to the un- "
dertaking of Mr. ,G.. Croydott-MatOss. Mr. P. Besbriere"
"holds a letter from Mr, G. Oroydon-M&rkB authorizing"
Frank I.. Dyer, Esq,.
"him to start negotiations with a view to a compromise"
."with the Path6 Co;, to the exclusion of any other "
"person; the necessary steps have been taken Oy Mr. "
"F. Desbriere, and. this he can prove. "
"Again, the proposed transaction is without object "
"at the present date, seeing that the experts remain"
"entrusted with the case and their report is. to he "
"filed very shortly; the filing of this report should"
"evidently he awaited, before any attenqat to compro- "
"mise is made. If the report is favourable, we are"
"nearly certain to gain the suit. If it is unfavour-"
"able, Mr. F. Desbriere is sure that the Paths C° "
"will only face a public debate of the suit, with him"
"as adversary, if they are absolutely forced to do so."
"He is too well aware of th!e financial position of the"
"Company and of its industrial irregularities not to"
"know that oral arguments presented by him personally"
"as he absolutely intends doing, will bring about con-"
"siderable trouble in the situation of the Company. "
"The directors of the Pathd C° know this .perfectly, "
"but the shareholders are not aware, up to the present,"
"of the pendancy of the present suit. The. interests"
“which are at stake are very important , . although M
'Mr. Ivatts may pretend to make light of the BUit. "
"The experts have, in fact, advised the representatives"
of the Paths C°- several times of the danger of their"
.'.'attitude,"
"In brief, Mr. Desbriere, by the present, makes re-"
"serves for all his rights, and concludes that the »
"proposed draft of transaction cannot be accepted "
"without modification. In fact, in his opinion, no"
agreement of any kind should be made at present with"
the Paths C° as this would seriously jeopardize the"
"interests of the plaintiffs. "
As desired by Mr.' Desbriere we are communicating to you,
ns desired, a translation of his letter, and we are also send¬
ing a copy thereof to Mr. Marks in order that he also may be
kept advised of what is taking place, and may take Mr. Desbriere’
statements into consideration.
We shall be pleased to receive your reply as soon as
possible, and meanwhile, remain,
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■<S-e^i.2Pj:£U/ ZY'~L.t^cz-<f- •j'' e^t/Ct-cf ' /S^SS ?<-<!> \S*e-*sPL ~.
Sept. 10, 1908,
Mr. 5?. Posbriere ,
,25 bis Hue do la Perme,
ilauilly b/ Seine, Prance,
Dear Mr. Dosbrioro: .
Your letter of the 2<ith ult. to Mr. Edison has
been referred to mo. 1 regret exceedingly that- the arrangement
which appears to have been made between Hr. Maries and yourself ,
under which yo,u were to have an interest in the results accruing
from the Pathe litigation, were not known either to Mr. Gilmore .
or myself. If it hud been, I would, of course, have consulted
you before waking any definite' offer of settlement with Mr. Ivaat.s.
vy own position in the matter is ono that cannot be oriticised,
but nevertheless I regret veiy much that anything should have been
done that might prejudice you. The suit against Pathe seemed
to mo to be never-ending, although' It was a constant • source of
expense. When in Paris in November of 1904 I v/sb' assured that
the cues would , odrisairily be terminated by the following Summer , ■
• but, although almost four years have gone by, the end' seemed
apparently as far off as then. , 'furthermore, I have road the .
argusionts at the preliminary hearing and it seemed, to me that our •
ease was not particularly strong, and . I have therefore always
.apprehended eventual failure. Under these oircumstanoes, when ,
Mr. . Ivaats was in this','ooimtryol^£aD^bHSyr5!ngJ'and after discussing .
.the matter- with Mr. Gilmore, I. suggested the possibility of . ■
. JV Desbriere. (2) 9/10/08.
sett ling the Pathe litigation. This was done , and I am afraid
tliat, no far an our interests are concerned, wo oannot escape
from the arrangement, even if wo desired to do so. This I could
not. in ..gaud faith do.
So far as your rights are concerned, we are under no legal
or moral ohli gat ions to carry out the private arrangement made
■between' Mr. Marks and yourself, ar.d my only regret is tliat I
should not have knovm. of that arrangement at the time the negotia¬
tions with Mr. Tvaats were being conducted. Mr. Ivaats.has in
his possession, hov/ever, a letter from you in which under date of
January 10, 1903, you offered your patents to Pathe Freror. for'
11,000 francs, so that of course his position is that the
arrangement wliicih was .reached between us. was substantially as ■
favorable' as that which you had proposed' yourself'. . Hot br-ing
familiar with the French .law, I cannot determine whether under the
arrangement made between Mr. Ife.rks.and yourself you could prevent
. .tiid carrying out of the arran.gement reached with Mr. Ivaats
in order to protect your interests, but I should. bo very glad to .
have you write mo fully on this' point.
Yours very truly,
fed/iw
MVJLIOMyr bHOMOebVbH COWbVMA
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Lavallois-Perret, te 23 October 1908.'
Prank L. Dyer Esq
Orange N.J.
Dear Sir,
•In addition to my last letter, I beg to inform that no settlement
of the Pathe' litigation, accepted by National Phonograph Co. or
Mr. Gilmore, or yourself, is of any value as regards Drench Law. it
was only by mistake that I mentioned your Company in my last letter.
So, as your good faith was abused of by Pathe*, you remain in full
power to inform them that proposals made in America beeing worthless
as to stopping your law action against them in Prance, they must be
considered as cancelled: I hope that this will be done.
I donot know if Mr. Ivatt received a written engagement from yourself
or Mr. Gilmore and I beg you to inform and let me have a copy: .
but even in that case, your enlistment will not stop anything in
Prance or do any harm to your law action. Thus, nothing is easier
than to escape from such a settlement, whose value is not understood
by anybody here: in any case, a fresh law action coming from myself
is to prevent any stopping of your one.
You told me kindly that the reason to have such a settlement was
that expenses of this lav/ action seemed very heavy. I would be
quite willing to take charge of them for the future, when expert's
report is published: but, if such ap agreement was accepted by all
interested partys and myself , you would have to allow me 60$ of any
sums recovered from Pathe* by sentence or agreement and engage to
helpme by every way in your power and not interfere in this law
action or settlement in any manner, unless requested. In any case,
I am sure that you will do your utmost not to let M.M.Brandon, "
Mr. Asermar, barrister, Mr. Dosjardin, solicitor, all distinguished
(COPY)
2
and faithful gentlemen, and myself he ashamed of such an undeserved
defeat.
X am quite sorry to see that your manufacturing plant in Paris
was put out, selling for 3,000 francs about what costed 30 times more
If I had been instructed in time, X would have kept it going at
my own expense. Working results of it 3eemed bad, only because
many expenses of your other raanufacturs and defected records made
by them were applied to it. I donot believe that it is possible to
manufacture French records and sell them in Prance without French
workmen and clerks, a3 having habits here are a very peculiar thing -
Yours Faithfully
F. Desbriere
Pol). 22, 1910.
G. Croydon Harks, Esq.,
56 Ss 57 Lincoln's Inn Fiolds,
London, Vi. c. , England.
Dear Hr. Harks:
I i® sending yon horowith a copy of all tlio. cor-
rospondonco relating to tho complication in which I find myself
on tho oubjeot of Hr. Dosbrioro, and I wish that you would tako
up this natter from now on so that I may ho roliovod of tho
worry of attempting to. handlo* it from this ond.' I havo writ-
ton Hr. Dosbrioro to-day that the matter has boon placei in
your hands, and an answer is ftill duo to his lottor of Jan.
17th". - '■
In brief, tho situation is duo to tho fact that I
was hot advisod, nor was anyone hore advised,' .that a private
agreement was made botweon you and Hr.' Dosbrioro under which ho
was to obtain a part of any rocovory secured in tho suit against
Patho.
In the Moving Picture buoinoss wo havo boon oo-opor-
ating vory closely with Patho sinoo oarly in 1908, and our re¬
lations in this country aro ontiroly friendly;, thoroforo, when
Hr. Charles Patho. and Hr. Ivatto approachod mo on the subject
of compromising the Dosbrioro litigation I was disposed to do
this, booaupo I folt that. a prolongation of the lawsuit in
Paris might rocult in acrimony. I roo ailed that in 1904 I haa
■boon a&visod by Hossrs. Brandon Bros- that the ease would soon
bo terminated and four years lator it soomod to bo no noaror
its ona. Furthermore, Patho Froroa had given up tho mnnufac-
turo of cylinder records ana wore limiting thomsolvos to diooo,
so that no good would have como by an injunction. Under
those circumstances I rocomnonded to Hr. Gilmoro that the mat¬
ter be settled and ho approved, and an offer to tlii3 effect
was made to tho Patho people. As soon as this was dono
Bosbriero immediately called my attention to his agreement with
you under which ho was to roceivo a part of tho rocovory , and
I found myself in a baa hole, out of which I have been trying
to got for about two years.
I want 10 ao tho fair thing by Desbrioro, but at the
sane tino cannot, of courso, take advantage of tho situation
so far as Patho are concerned. I want to mako good my prom-
iso to thorn if possible. Kven if Bosbriero carried on the
litigation and made a rocovory, I should fool morally bound to
turn ovor to Patho everything coming- from our share over and
above tho amount proposed in tho settlement •
1 hopo by referring this matter to you that you may
bo able to make somo settlement of it without spending too mooli
of your time, because tho Patho- suit lias already boon a great
osponse and wo have dorivod absolutely nothing from it.
If there is any question r dating to this situation
that you want to ask mo about, lot mo Imow and I will ohojrfuliy
answer.
Yours very truly.
fed/iuw
President .
[FROM RAPHAEL HUNTER BRANDON]
l .
kb/kt
k
0 xf
Vf y
March 4,1910
.hJ- .
Gee. Croydon Harks Eoq.
18 Southampton Buildings,
London, V/.c.
Dear Sir, , ■
We hog to acknowledge receipt, of your ’s
of the. 2nd inst. containing the oopy of a letter of the same date
which you have sent to Mr .Deobrior.e.
We take the- opportunity' of reminding you that in the event
of Mr.Deabri&re agreeing to continue the cult at hie expense,
this will hot prevent your' Being personally condemned jointly
with the Edison Company, in the event of the Pathe Co. winning the
case, to pay the said Pathe Co. damages, if any damages are allowed
You will' kindly hear in mind that the Pathe Co. coptend that by
your infringement, suit and the ueisure performed' at . its Works at
Chatou a. serious damage has been -caused them, they claiming the.
extravagant sum of 500 >00 francs on that score. This is an ’
important point and we take the liberty of calling your attention
to it.
In the meantime, , we beg to inform yep. that our avoue has .
communicated us this morning a pressing letter which he has
received from the aveue employed by the Pathe Co. In view of this
pressing letter \ve again take the liberty of urging you to kindly
come to a final decision an soon as over possible..
A carbon copy of this letter is being .forwarded to. Mr. Dyer.
It is with much pleasure that I beg, to
confirm the official letter I am sending you by same
mail with regard to the Desbriere (Marcks -Edison)
difference. -
I have not had the least doubt that it is
owing to your personal intervention that our Company
will see at an end a suit as wearisome as it is fastid¬
ious, and I thank you fin its behalf as well as on mv
own . '
Mr. Desbriere proposes and we have accepted :-
1°.- Renunciation- to the Buit brought by
Marcks ; .
2°.- Renunciation to the suit brought by the
Compagnie Erangaise Edison;
3°.- To beoome licensees under the Prenoh
Desbriere patents up to their fexpiration
All of this under very acceptable conditions.
The necessary documents to conclude this
transaction are in our lawyers* hands and in a few •
tion everything wil1 ^ settled to our mutual satisfac-
There remained to be cancelled the agreement
passed between us dated June 1908, which is the object
of my official letter, and this cancellation will be
effected ipso facto upon Bigning the aforementioned
transaction.
1 am personally very glad that these diffi¬
culties be remo-red, as our relations will beoome but
more cordial.
Yours faithfully,
Ljth'hnOfc,
JL
Konsie ur DYER
c/s. Edison Manufacturing C°
(ORANGE)
New-Jersey
— MonBieur,
I>e lei Juin 1908, nous youb ecrivions ce qui
— f— "Privee et confidentielle
TaHn”1* Juin 1908
Monsieur Dyer
C/0 EDISON MANUFACTURING C°
. (Orange) New-Jersey
'"'Monsieur,
"J’ai soumis a notre Conseil d ’Administration les propositions
que nous avion s discutees ensemble durant mon sSjour a New -York.
" Mes collegues seraient heureux , yu nos tres importantes rela¬
tions commerciales aux Etats-Unis, qua le proces DeBbriere n’existat
" plus entre nous.
" Nous sommaB n^anmoins dans une position asses genante envers
les maisonsamies allemandes qui combattent actuellement, aYec des ohan-
oes de suoces, votre breYet en Allemagne; car en reconnaissant votre
brevet, non-seulement nous les abandonnons, imais nous vous fournissons un
atout tres important contra eux, danB le process de nullitd du brevet al-
" lemand.
„ . , " Neanmoins nous estimonB qua 1’interSt de notre Sooiete n’est pas
de combattre votre breYet sur un article qui disparaitra pour nous, dans
" un court espace de temps. •
„ , J ! "Nous sommes done d’accord pour reconnaftre votre brevet et d’etre
" licences par vous jusqu’a sa fin.
n ,«r . ?? °8 qui con9®*ne la royaute proposes qui devait coiamencer le
x i 1909, nous prefererions de payer de suite une somme nominale
et dviter Isb complications d’un compte a tenir sur les cylindres -f ait’s
et vendus., . .
" Nous basant sur l 'offre que nous atfait faite M.Desbriere dans
ii 0t dont J’e V0SS 0nVoie oopie, nous peneons que la some de
10.000 francs pourrait etre consideree comma equitable. {Nous pensons r<5el
J be^6 somas.eBt superisure & cells que nouB vous palerionp
avec la royaute propoB^e, durant. 1’ existence des cylindres ones nous)
11 Pour r6suraer, nous accepterions la transaction suivante:
" la proces jiesbriere serait abandonne, chaque parti suppor-
" tant bob proproa depenseB at sea frais judiciaires.
" Nous reconnaitrions le brevet DeBbriere et nous en serions
M les licences jusqu’a sa fin.
" Nous vous verserions une somme da 10.000 francs.
" Nous esp^rons qua las propositions ci-dessus seront rogues
par vous dans la mema esprit ami cal qua celui qui nous les dicta,
Votre d£vou£
1 *Administrateur-del6gu6
sign6: E.A.Ivatts""
La 29 Juin vous nous repondiez par la let tr a Buivante:
Orange N.J, June 49, 1908
E.A.Ivatta, Esq. Managing Director,
Path6 Preres
98, Rue da Richelieu, Paris, Prance
' ""Dear Sir:
" I have your letter of -the 1st. inst., proposing bn
" behalf of Pathd Preres the settlement of the suit baBed on the Des-
" briere patents in Prance and vithout prejudicing in any way our rights
" for the prosecution in Germany of the auitB on the corresponding pa-
" tents, said settlement being the following :
" 1. Desbfiere law-suit in Prance against Pathe Preres will be
" abandoned, each party paying its own expenses and legal fees.
"2. Paths Preres will reoognize the validity of the DeBbriere
" patents and will be licensed under the patents so long as they bhall
" run.
" 3. Pathe Preres will pay us the sum of 10.000 Pranc 8 in full
" settlement for all damages for past infringements of said patents
" and for future royalties thereunder.
" In reply I beg to advise you, on behalf of the Edison in-
" terests that your proposition is accepted.
" I will be much obliged if you will take up this matter
" with my attorneys in Paris, Messrs. Brandon Bros.; .59 Rue do Pro-
" vence who will prepare the necessary papers and forward them to me '
" for approval.
I am glad that this matter has been disposed of, and hope
" that the friendly spirit now existing between our two interests will
continue
* Mith assurances of my personal regard, believe me
flours very truly
"Pranck L. Dyer
"Chairman Executive Committee
Une transaction etan.t sur le point d’aboutir entre notre
Compagnie et:
1°- Monsieur Croyton Maroks, de Londres,
2°- Compagnie prangaise du Phonographs Edison, de PARIS, nous
convenons reciproquement , que les deux lettreB preoit^es sont consi-
d£rees comma nulleB, et sans valeur antre noB deux Sooi^tes,
Toutefois cette annulation ne deviendra effectire qu’apres
la signature de la transaction dont 11 est question plus haut, ce
qui ne saurait etre diff£r6 que de quelqu’es jours.
Nous tous prions de youloir Ijien nous dire d’accord avec
nous par retour du courrier si poBsi'ble et
Agrees, Monsieur, 1 'assurance de nos sentiments amicaux
C!?G£d«FHQN0aRAFH£3.G[NC'dATxJ(iRAFHHS
ET APPAREILS DE PRECISION
l/Administratour ddldflud
Monsieur TWER, Orange, New- Jersey
Compagnic Genorale do Bhonogr'aphcs ,
Cinematographes 'ot Apparoils do Precision,
98 Hue do Richelieu,
Yours of Ray 27 , 1910, has beon duly received, and 1
'note with -satisfaction that the litigation' between your Company \
and Mir,. - G. Croydon Marks of. London and also the Compagnio PranoaiBO
du Phonograph© Raison is' about to be settled. I Cm quite willing
to agree that my letter to you of June 29, 1908, Shall be con¬
sidered as void and without . value between -^BOf two companies , upon
tho under standing , of course, that your lottor to mo of June 1,
1900 i is to bo also withdrawn and annulled.
Accopt, gentlemen , my boat VTishoB, and boliovo eq-.
Yours vory truly.
Legal Department Records
Phonograph - Case Files
National Phonograph Company v. American Graphophone Company
(Miller and Aylsworth Patent 683,615)
National Phonograph Company v. American Graphophone Company
(Miller and Aylsworth Patent 683,676)
New Jersey Patent Company v. American Graphophone Company
(Joyce Patent 831,668)
This folder contains material pertaining to three suits brought against the
American Graphophone Co. in the U.S. Circuit Court for the Southern District
of West Virginia. The first two suits were initiated by the National Phonograph
Co. in June 1905; the third by the New Jersey Patent Co. in November 1906.
The cases involved three patents on methods of duplicating phonograph
records— Walter H. Miller's and Jonas W. Aylsworth's U.S. Patents 683,615
and 683,676 and Maurice Joyce's U.S. Patent 831,668. The cases were
consolidated by stipulation in January 1908 and dismissed with costs to the
defendant in December 1910. The selected documents include
correspondence by Frank L. Dyer and Herbert H. Dyke of the Legal
Department and Philip Mauro and C. A. L. Massie, attorneys for the defendant,
pertaining to the progress of litigation. Also included are the following items
from the printed record of the consolidated case: index; complainant’s brief in
support of a motion to suppress the deposition of Mauro; defendant's brief in
opposition to the motion; defendant's proofs; and complainant's rebuttal proofs.
•V
I
Jan. 23,1908
Melville Church, Esq,.,
908 - 0 Street,
Washington, D.C.
Dear Mr. Church: -
I have three suits pending in West
Virginia against the American Graphophone Company, in
which the same record is to he used.. Two of the suits
are brought by the national Phonograph Company on patents
of Miller & Aylsworth, and one by the Mew Jersey Patent
, Company on the patent to Joyce . Mo Edison patent 1b in¬
volved and Mr. Edison has no connection whatever with the
suits. Mr. Mauro has presented a deposition that oonsiBts
Entirely of a most scurrilous and utterly unjustified
attaok on Mr. Edison's reputation and integrity, and on
the reputation of the National Phonograph Company. He
claims that the phonograph is really a graphophone as in¬
vented by Bell and Tainter, and that the ubs of the former
name is fraudulent and highly reprehensible. He takes up
the various legal oompany litigations and claims that
the national Phonograph Company is doing business in dd-
No. 2 - M.O.
fiance of the oourtB. He refers to my unfortunate ex¬
perience with Judge Platt, where a temporary restraining
order was obtained on a patent that had expired by reason
of the expiration of a prior foreign patep£,oa5i& ifialas
tt'K VrJI>s 5:0
it appear that this ^^mStfiS^Our part was entirely de-
i claims that the suits before Judge Platt
on entirely aiff erent patents are conclusive if the
present suits. And he brings into the case, the action
taken by Mr, Edison againet the Thomas A. Edison Jr.
Chumioal Company, and seeks to give the impression that
Mr. Edison, by that action, was striking at his own son.
After the deposition he puts orirtthe record, the following
notice:-'
"Counsel for defendant hereby gives
notice that at or before the final hearing
herein, he will move the Court for the im¬
position upon complainants of a fine of not
less than Twenty five thousand dollars
($25,000) for their inequitable oonduot a b
shown by the testimony herein, and for the
damage and loss wrongfully inflicted upon
defendant thereby. And for Buch other and
further relief as to this Court shall seem
just."
I can Jjardly reconcile Hauro's attitude in this
matter with a balanoed mind. His testimony is outrageous
ly unfairy ; and distorted and is utterly unworthy of him.
It seems to me that I should promptly move to have the
deposition expunged with costs on defendant. Of course,
every statement can be met and fully explained, but to do
this would..lnvolv:a.Jdie.. taking ,of an enormous mass of test-
ppyr> Aonyg yaAOjAe ppe psrpyuK oy Era suouuoira wsraa oy peaf-
sa«x2>. Bftr powsap oura pc, we 4; aug yr/yyX GJdbjsryasg' pnp po go
geboaypyon eXBrroBog wypp ooopa on geyeagaruf Qy comma 1
It bggwb fo uia ppa-p y aponyg BxoiuBpyX woag 4:0 ptrAe ppe
j3i mrys-yx 1 trug gja4.-01.fGg srug yo nppexy?!. mrr.voi.fjA oy pyw
ineppox. /Aypp &• ps-yg-uoag wyag • pya pe spy won?.. ya onpxsrSeo«n-
I osa Psxgyk iGCoucTjG jjpnxo , a srppypnge ya fpya
■jaef,,
ynxpjrex J.eyyey as fo fpya conxf aperyy aeenr
gGyeugirap ppexGpV yjjg yox ancp of pea gag
gams- Eg .aug yoan /Ai-oaGynjjX yjjyyycpeg mi on
ajroAva pJi fpe peepyaionA. psxoyn* srug yox fjre
($33*000) J.oj. ypeyx ynsdnypa-pye coagrrcp s-a
jess fpaa jAieafJv yyAG ppomm-ug goyyaxa
fcoaypyoa nlroa cosri&ysrynarnpa oy a yyaa oy aof
paxeya* pG Avyjy jjjoag fpe Qonxp yox fp6 yur-
uofycc pptrp af ox pcyoxe fpe yynn-y pasxynS
,,comrsoy yox gGyanganp pGiopA Gy ago
ypyon pe Brrpa onuppe x-sooig' pps yoyyoivynfc:
r ErR-.-ymif fpe jpoissra v* Egyc<
Qpawyosry GOwSaaJ.’ wag aecpa po EyAG fps yiahxeaayoa pps-p
ffrytew p>- yp.* Egyaoa sfe-yaap pjre yporos-a v* Egyaou ai.V
fcxeeonf any fa • yrag pc pj.yaeaya.po ppe ob3g| pps acpyoa
oa oaf yxcj>. gyyy oxeup Bsrpeapa axe coacjaayA.6 g y, pps
T $J5jxrlp3bflU,Hie cje-yraa jrpo-f ppe any fa pa yoxe ingEe Bya-pp
e 1 Vo uid-l
yf frfc&esrx ppsrp fpya wf^OtiftHyQxa Baxp avsra oufyxsyX gG-
have +a
oy ppe exByxsrpyoa oy a Bxyox yoxoyEn Bnpafifp’oy## jggjoa
oxgsx mob oppayueg oa s- Bapcnp ppap psrg exByxeg pJv xesraoa
Bex y cues Avypp ingEa £ys-pp‘ Avpexa a femBoxsr.-a. xeapxEryuynS
yytmce oy ppe oonxpa* jjs xeyaxa fo nflv nayoxffms'pG ex-
Iio* s “ JTG*
entire history of all of these litigations. Can it he
possible that a defendant in an ordinary patent suit,
involving the usual issues of validity and infringement,
should have to go to suoh trouble and expense? This
issue alone would probably require a thousand pages of
testimony. It is entirely irrelevant, and for the most
part relates personally to Mr. Edison, v/ho is not a
party to the suits. At the same time, of course, we
cannot, as a matter of self respect, allow a defamatory
attack of this character to go unanmrered.
Please think this question over and advise me
if you agree with me in the matter. Personally, I do
not think the court should hesitate for one instant in
granting us relief.
Yours very truly*
TO)/ARK.
General Counsel
Mr. Prank L. Dyer,
Edison Laboratory,
Orange, N.J.
My dear Mr. Dyer:-
X have examined with care, and, I may add, with feel¬
ings of indignation, the deposition of ?Jr. Mauro given in the
West Virginia suit. It is in the record and even though, it
were, on motion, suppressed, it would still remain there. (Blease
vs. Garlington, 92 U. 8. 1)
Mauro was not justified An going on the stand at all.
There was no exigency. Bacord evidence or his client's
testimony would have served the same purpose. His who la conduct
was a violation of established legal ethics and serves to show
how a long and intimate association with the management of the
American Graphophone Company may undermine and warp an able
lawyer of good natural instincts.
The XXXV Resolution of Hoffman in regard to Professional
Deportment (Hoffman'3 Course of Legal Study, 2nd Ed. Vol. IX,
p. 751) reads as follows:
on. d.c. Jan. x
I*
anv m,,,. 5nW^L29T9r be voluntarily called as a witness in
£ “I ' ASH? u*
frss h' £Er-i“ FI?™“ $ ss&'JLSi.
1
Dyer — 2
usually resorted to only as a forlorn hope in the agonies
of a cause, and becomes particularly offensive when its object
be to prove an admission made to such counsel by the opposite
litigant. Nor will I ever recognize any distinction in this
respect between my knowledge of facts acquired before and
since the institution of the suit, for in no case will X con¬
sent to sustain by my testimony any of the matters which my in¬
terest and professional duty render me anxious to support.
This resolution, however, has no application whatever to facts
contemporaneous with and relating merely to the prosecution or
defense of the cause itself; such as evidence relating to the
contents of a paper unfortunately lost by myself or others _
and such like matters, which do not respect the original merits
of the controversy, and which, in truth, adds nothing to the
once existing testimony; but relates merely to matters respect-
ing the conduct of the suit, or to the recovery of last evidence:
not does it apply to the case of gratuitous counsel,— that is, to
those who have expressly given their services voluntarily."
The Code of Legal Ethics adopted by the Alabama State
Bar Association contains the following provision:
"21. Whore Attorney Becomes Witness for his Client. — When
an attorney is a witness for his client except as to formal
matters, such as the attestation or custody of an instrument
and the like, he should leave the trial of the cause to other
courtsel. Except when essential to the ends of justice, an
attorney shouid scrupulously avoid testifying ih court in behalf
of his client, as to any matter. " (Alabama Code, Sec. 18)
This provision has been adopted bjr the following Bar
Associations: Georgia (Sec. ie); Virginia (Sec. 18) j Colorado
(Sec. 18); North Bardina (Sec. 18); Wisconsin (Sec. 18)j
Maryland (Sec. 18); Kentucky (Sec. 18); Missouri (Sec. 14);
Michigan (Sec. 38), and,I am glad to be able to report, has also
been adopted by the Bar Association of the State of West Virginia
(Sec. 18)
I have written to the secretary of the West Virginia
Association for a copy of the Code of Ethics of that stats
Dyer — 3
and will forward it to you as scon as X receive it.
Your technical objection to the deposition "As scandalous,
impertinent, incompetent and immaterial", might have been
amplified to have included hearsay, secondary evidence, matter
of opinion and arguments, and you should, perhaps, in strictness,
have pointed out the portions of the deposition to which these
particular objections were .respectively, aimed. If the
manner of producing the deposition had been by question put
and ansvfer given, in the usual way, you could, by properly phrased
objections, have kept the matter better in hand. The course
of procedure that was adopted, or permitted, confirms my theory,
many times expressed, of the dangers of permitting testimony
to bo adduced out of the presence of opposing counsel.
I am not sure of the fate of a motion to suppress. It
will depend altogether upon tho temper of the judge before whom
the matter is brought. At all events, I would not bring on
the motion, nowj though I would bring it on at or just before
the hearing, upon reasonable notice. When it comes up, I
would make a dead 3ot for Mauro, ask for the application of the
West Virginia rule and that the deposition be laid out of view.
I would, under no circumstances, endeavor to make
reply to the deposition, in kindv It has bean ray experience
that such a throwing of du3t or mud seldom or never has any effect
upon a meritorious case, and- if these West Virginia cases are
otherwise good the only effect that the deposition v/ill have
I
Dygr — 4
upon them will be to create a prejudice in the complainant’s
favor. You and your people are very naturally incensed over
the matter and are perhaps not in a frame of mind to act
soberly and dispassionately. My be3t judgment is that you
can afford to wait until the hearing to administer your rebuke.
If Mauro has been regularly admitted to the West Virginia bar
(which can be readily ascertained) his position will be much
worse.
I return the deposition herewith.
Yours truly.
TO
%-eM ?*. $tLL' Hay 18, 1908.
Hon. Benjamin P. Keller,
United States Judge,
Bramwell, Meroer Co., W. ffa.. •
Dear Judge Keller:- ?
NATIONAL PHONOGRAPH COMPANY yb . AMERICAN GRAPHOPHONE COMPANY,
( TWO SUITS ) ;
~v mm JERSEY PATENT COMPANY yb. AMERICAN GRAPHOPHONE COMPANY.
Prank L. Pyer, Esq., oounsel for complainants, .informs ua that
your Honor has set the 20th inst. as the. date for hearing ooiqpla.inants 1
motion to strike from the files of this Court the Mauro deposition taken
in the three ahovo-erititled cases. ; . i
We heg to enclose herewith defendant's brief in opposition to
motion. We likewise enolose a oarbon copy for complainants' oounsel,
who exp eota to attend before your Honor and make an oral argument; we
would request your Honor to be bo good as to deliver the copy to Mr.
Dyer, or hl’s representative, ub counsel for complainants .
. ' • Respectfully yours,
Counsel for the American Graphophone
Company.
S-H.
IN THE CIRCUIT COURT OF THE UNITED STATES
For the..S.o..u_tiiexn__District of_!ss.£....Ya.....
NATIONAL PHONOGRAPH ' COMPANY
vs.
AMERICAN GRAPHOPHOjIE COMPANY.
NATIONAL PHONOGRAPH COMPANY
TS •
AMERICAN GRAPHOPHONE COMPANY.
N m JERSEY PATENT COMPANY
vs.
AMERICAN GRAPHOPHONH COMPANY.
In Equity, Docket No. -
■ ■ ■ On - - - .Patent No _
sm . , , „ „ snss stobs sst™
Please take notice that. . . . DEPOSITION.
PHILilP MAURO, t
C. A. L. MASSIE,
Tribune Building, 154 Nassau Street, New York City,
To Prank L. Dyer, _ Esq.,
. Of . Counsel for Complainants . .
Due aud timely service of a copy of the within
AFFIDAVIT OF SERVICE.
IN’ SHE GXROUXT GOimS OP SHE UNITED STATES
Southern District A£ West Va.
j NATIONAL PHONOGRAPH COMPANY In Equity on Miller
yb* & Aylsworth Patent
AMERICAN GRAMOPHONE COMPANY No/ 083 , 63.5 .
NATIONAL PHONOGRAPH COMPANY In Equity on Aylsworth
AMERICAN GRAPHOPHQNB COMPANY 663*676* Pa*8nt Ho*
NEW JERSEY PATENT COMPANY
7a.
AMERICAN GRAPHOPHONE COMPANY
In Equity on Joyce
Patent No. 831,668.
(V
DEFENDANT'S BRIEF IN OPPOSITION TO HOTXON TO
EXPUNGE HAimO DEPOSITION.
Preliminary.
| The matter should ha hr ought up hy Exception, and
referred to a Master.
Equity Rules of supreme Court, Rules 36 and 37.
Although these rules apply especially to hills and
other pleadings, yet they hold good with regard to deposi¬
tions also.
Story's Equity Pleadings, 10th Ed. see. 881a,
P. 746; and Rule 37 supra.
| Outline of Argument.
NeyertholaBs, assuming that the Court will entertain
the Motion to expunge the Mauro deposition (instead of re¬
quiring Exceptions), this motion must he denied upon four
(X) "Nothing can ho scandalous which is
roXarant'S «nd Mature deposition is rele¬
vant.
(Si) So determine whether or not the Mauro
deposition ort/ any material part thereof is
irrelevant (and therefore open to the objec¬
tion of being "scandalous0}, would require a
perusal by the Court not only of tho entire
Kauro deposit. ton but of the entire mss of the
testimony, and a consideration of all the
matters here in controversy, - in short, such,
consideration as the Court would have to give
at final hearing, and it therefore should be
postponed until the final hearing.
(3) As a matter of faot, the defendant
asserts affirmatively that the Mauro deposition
is very material and pertinent to the merits
of this case, and iB not scandalous.
(4) Under the decision of the Supreme
Court in HLeage vs. Carlington (93 U.8. 1},
the Circuit Court iB not permitted to striko
out any testimony that might hereafter be
found relevant or material, but muet retain
the testimony and roBerve the exception of the
opposite party.
ARomtsira.
i.
She citation from Story's Bauity Pleading fees, esia,
p. 746} and Equity Rule 37, show that the same definitions
of "scandal” and the same ruXeB an to ■whether or not it
may he expunged, apply to depositions as well as to plead¬
ings. It seems unneoesaary to define what Is "material”
or "relevant”; hut "nothing ean he soandalous whioh Is
relaxant". And "the sole question is whether the matter
alleged to he soandaloiiB has a tendency, or, in other
words, would he admissible in evidence, to show the truth
of any allegation in the hill that is material with .
reference to the relief that is prayed”, - material either
in granting or refusing the relief prayed.
See Beach's Modern Equity Practice, seo. 407,
p. 436, and foot notes.
Same, seo. 109, p. 136, and foot notes.
Again -
"But, as in a hill, so in an answer,
nothing relevant oan he deemed scandalous. It
is not the nature of the matter in an answer,
which makes it soandalous ; for if the matter
is relevant, according to the ease made hy the
hill, whatever may he the nature of suoh
matter, it is not scandalous; and it may have
an influence upon the decision of the suit,
notwithstanding the nature of it.”
Story Equity Pleading, Seo. 868, p. 786,
and foot notes.
"But nothing, whioh Is positively rele¬
vant to the merits of the cause, however harsh
er gross the charge may he, oan bo correctly
treated as soandalous. Jhus, for example, in
*3-
■bills to set aside deeds, op other instru*
meats, fop fraud, there are often to be found
gross oharges in relation to the ijiatter of the
aBsertod fraud. But these ohargee are not, by
any rule of the Court, to bo deemed scandalous.
And, indeed, such a proceeding - i.e., to
expunge relevant testimony because scandalous -
might be dangerous to the cause itBelf, and
pro-rent, a due investigation of it,B merits.
Hence it 1b , that nothing pertinent to the
oaue e is ever deemed soandaloue t and the degree
of relevancy is not deemed material*. (Balios
ours).
Story, sec. 369, p. 368, and foot notes.
For an illustration, ‘and a reoent discussion, we
refer the Court to Burden va. Burden. 184 F.R., 350.
5e bum up, without biting any other authorities, -
no matter how gross may be the oharges oontained An the
matter complained of as scandalous , if .flush matter is or
may be in the slightest degree KELTS! ml," At must not be
expunged.
And if the allegation exoepted to oan have any
jg^asaia whatever in the decision of the suit - either as
to the anhjeot-matter of the ^controversy, the particular
relief to be given or withheld, the awarding of oasts, eto. -
it is not impertinent.
Yon SOhroder vs. Brittan, 98 F.R. 169, 171}
.Van (Rensselaer -rt . . Briee, 4 Faige (H.Y. i , 174}
: Hawley .TBV"Woiver ton,' 6 Paige5''S33{
Leslie Vo. Laolio, 50 H.iT. Sq., 186, 156^7.
XX.
From the foregoing, it iB Manifest that, to Justify
the Court in expunging the Ifouro deposition (or any part
thereof ) the Court will he called upon in the first place
to determine that the passage cr passages objected to are
irrelevant, and will not even tend to affect the decision
of the cause.
But, to do this fairly, the Court must consider
the entire merits of the cause, and Must read and consider
all the evidence. She Court will scarcely undertake this
labor in advance of the final hearing, at which time the
same evidence will then haye to be considered again.
Especially since defendant, regarding the Hauro deposition
as material (as we do), would of course enter its Exception
to an order expunging it; so that the entire matter would
hare to be considered again, anyhow, at the final hearing.
XXX. .
We have shown that matter will not be expunged on
the ground of its alleged "scandalous" nature, if it is (or
may be) at all relevant; and that the Court is not called or
at this Biage of the oase, in advanee of final hearing, to
read and consider the entire evidenoe in order to deter-
mine conclusively, before t)ie final hearing, that such
testimony is not relevant and 1& scandalous . Xn other
words, the burden is on complainant to show that the
deposition ie absolutely irrelevant and immaterial as well
as eoandalous , and the Court must so hold before it can
-5-
expunge. But defendant asserts affirmatively, and we will
now briefly demonstrate, that the faote eet out An the
Mature deposition are highly Material to the determination
of this oause, wherefore they eannoi he the subject of an
objection for scandal.
1. SMb Court is familiar with the oardinal maxims
of equity, under whioh a eourt of equity will refuse relief
to a complainant if he has been ttnoonsoionahle or oppressive
or vexatious in seeking the relief. For instance, where a
plaintiff has unquestionable legal rights whioh have been
invaded by a defendant, yet if the complainant be oppressive,
or unconscionable, or inequitable, in asserting Ms rights,
courts of equity will refuse Mm the relief to whioh he
would otherwise be entitled. Unconscionable oonduot
disentitles a complainant to relief in equity, and he ....
is remitted to Ms oommon lay/ rights (if any). And the
Mauro deposition bIiowb iMa inequitable oharaoter of com¬
plainant's oonduot.
2. 5lhe Massie deposition now filed An these oases
shows clearly not only that the defendant is not infringing
any of the patents here in suit, but that At ie Anoon-
oeivable how ths defendant oould. by the transaction; oom-
plained of, be simultaneously infringing all the patents, -
because the patents in suit are inconsistent with each
other. We will make thiB plain later} but the present
pertinence of this fast As that the complainants by bringing
these inconsistent suits are merely making use of their
position as patent-owners in order to harftsB us. And the
Where deposition shows the general course of oonduot the
- .-6-
complainants have praotioed against us in this regard.
So a tat a briefly the finest Aon of infringement: She
two Miller and Aylsworth patents An suit Gall for the use of
a oold mold, and require that this mold mist not become
heated; while the Joyce patent in suit calls for a hot mold
that must ho heated before use; yet in all three cases
complainants are complaining of the same acts by defendant .
It is inconceivable that one can be using a mold that is
simultaneously a hot mold and a cold one. And it is
inconceivable that complainants have not been aware of thiB
inoonsistenoy.
So be more specific: the Miller and Aylawcrth
patents require, as noted, that the mold must be cold, and
that the material which is to be ueotl with the mold, must
not be heated much above its,. melting-point ; the Joyoe patent
as noted, calls for the use of a hot mold, but (like Miller
and Aylsworth) requires that' the material must not be heated
much above its feeltlng-point (while the mold must be slightly
below this temperature); whereas, in defendant's process,
which has long been well known to complainants • the mold
is taken cold, while the material is heated to a tempera¬
ture of about 180 degrees above its meltina-polnt. and the
mold after being filled when cold., is subsequently heated
to the same abnfirmally-high temperature.
She foregoing is a brief but fair presentation of
the faots relating to ‘•infringement*', nothing being now
said as to the validity of the three patents. If this
were the first oooasion upon which the complainants had
brought an ill-advised suit against us, the situation might
not appear so oppressive. But the Mauro deposition shows
that these suits are the oontinuation of a long oourse of
oppressive conduct complainants have "been indulging in
against thiB defendant through a number of years .
The Mauro deposition further shows the highly
significant fact that this complainant has o eased to
harass thiB defendant with suite in the Courts of the
Seeond Circuit where its { complainant's) inevitable conduc;
is well known, and has sought this Court as a fresh field
for its outrageous line of conduct; and particularly that
complainant had, for many years, suits pending against
defendant in the Second Cirouit on these very Killer and
Aylsworth patents, and that it withdrew said suits in order
to transfer the cases to this Corat.
3, If the Hauro deposition were not in these ca:sea
we would have no fear as to the immediate outcome of these
particular suits , inasmuoh as this Court will undoubtedly
dismiss these hills heoause the patents are not infringed
(and, perhaps, on the further ground that the patents are
not valid); hut there would then he nothing to prevent the
complainants from bringing against us other suits, upon
other patents, and in still other jurisdictions, with as
little foundation as these suits. Therefore the Mauro
deposition is presented as supplementing our application to
this Court, as a Court of Eauity, to exercise its inherent
powers of doing justice between the parties, in order to
deter the complainants from waging agaihBt us such unfair
campaigns .
4. This is not the oase for a cross-bill; a cross¬
bill asserts some right of the defendant in connection with
the snhjaot-mattor of the suit, and prays for affirmative
relief with regard thereto, against complainant. The
-8- ■,
j| *subjeot-Eiatterw of these BtiAtB oonsiets of the particular
: patents set tip; and. this defendant asserts no right a in or
| under these patents. We do not ask affirmative relief with
| regard to a legal claim in our favor, subsisting before
the bills were filed, as against the subject -matter of these
i suits, - but the wrong we complain of As the filing and the
| prosecution of these unwarranted and vexations suits* as the
| continuation of an oppressive course of conduct. Another
! reason why a cross-bill is not propar, is that a oross-bill
! must seek relief cognisable by a Court of equity, as for
I instance, an .Injunction. We may not ask that these
! defendants be enjoined from bringing against us other suits
| on other patents; we merely ask that this Court of equity
do Justice to the parties now before it, upon the facts
as made out in the record before this Court.
In the Connecticut case referred to in the Mauro
deposition and reported An 135 3?.R., the Connecticut Court
| directed complainant to pay ‘us , by way of compensation for
i the oppressive nature of that suit, a fine of 8500.00. It
might be supposed that this would suffice to put an end to
the oppression, but $500.00 As comparatively a small sum
in the eyes of a large corporation, and evidently that small
fine lias not had the desired offset, Ehorefore, defendants
hefein.
counsel has given notioe/afc the end of the Mauro deposition,
that this Court will be asked at final hearing to inflict
a more forcible reproof upon complainants, and give the
defendant a more adequate redress .
IV.
But without regarding any of the foregoing argu¬
ments given in this brief, wJiioh refer to Equity praotioe in
general, the matter has been determined once for all by
the supreme Ooiirt of the United States. Xn Please y.
garllnaton. that tribunal has announoed;
"Xf testimony is obi noted to and ruled out,
it must still he sent here with the reoord.
subject to the obj action, or the ruling will
not he considered hy iis*. (Italics ours).
Bleaae y. garlington, 98 tT.S.l, p, 8.
since that decision, the Federal Courts, whenever
the case of Blease v. flarlington has been brought to their
attention, hayo inyariahly refused to strike out any
testimony - which is thus safeguarded eren beyond the rules
relating solely to pleadings - and haye reserved the entire
testimony in the record, together with the exceptions
thereto.
For each of the reasons presented, the motion’to
expunee should be denied in ail respects. *
Respectfully submitted,
PtJLfy JUUmA*. , -
Solicitors and of Counsel for Defendant,
I Bomsomm.
2ha foregoing memorandum was prepared wAthin a few
j 4a-a the close of the hauro deposit Aon, and upon the
| notice by complainant's counsel appearing in the record.
I We are now in Keoeipt of complainant's motion paperB and
| aot® that they we fatally insuff Aoient in not specifying
| Khereln, in what respeotB, the Mauro deposition As "scandal-
; oils" or "impertinent* or "incompetent and immaterial" or
! #«atier of opinion and argument" or "largely hear-say" or
"designed to oreate an immaterial issue" eto,, eto.j nor
do the motion papers specify the particular passages oh-
j n0xi0UB on of the grounds" alleged An the motion.
Oostt>lainantS;«»08» hole and ask the Court to expunge
| practically the. entire, MaproAdoposition npon the ground
alleged hv ooqp.lainanta ttat/the deposition is "soandalous",
"impertinent", eto. Since, /as shown in our min brief, the
| burAen of proof to establish: these charges, rests npon
complainants, their motion papers should certainly make soma
, kind of showing in this regard, since their papers are
in thia regard, except for the mere say-so of oora-
j r3-Rinant'8 oounsel, for this reason alone the motion should
I he denied.
In the second, place, it is not sufficient to say
in substance that one unspecified part of the deposition
is objeotionable heoause "soandnlouB", while another un¬
specified part of the deposition in ohjeotionahle heoause
I "matter of opinion and argument", and still a third un¬
specified part of the deposition is "incompetent and immater¬
ial" eto. She objection should he specific not only An
.
1 -n-
i! stating the ground of objection, but also in pointing out
[ the particular i>aBsage objected to on that particular
|i
ground. She prenent procedure is analogous to the filing
! of Exceptions; where tha Exception mist Bpeoify the par-
tioular passage objected to and the ground of the objection
to that particular paseage, and if the Exception extend to
j wore than is properly objected to, the Court will not
! expunge the objectionable portion, but will hold the
| Exception bad as being top broad:
"and if an exception be partly good and partly
bad, it wust be-- overruled in toto."
Beach's Mod. E<j. Er., § 118,' p. 139;
Baniell's Oh. Kr. (f>th Ed.), 338;
Ghapnan y. School Diet. No. 1, Beady, 108, 117;
Xenoh y. Cheese, 1 Beay. , 571-5;
YTagstaff t. Bryan, 1 R. « M. , 30.
Complainants ' motion papers say:
"If the deposition of the said «auro be not
expunged, complainants will be put to great
trouble and expanse in the taking of deposi¬
tions in reply, Yfhioh will be extremely
voluminous . "
"Irrelevant and immaterial" statements do not have to be
rebutted by "extremely voluminous" depositions taken at
"great trouble aud expense". Complainants' motion papers
stand as an admission that the Maura deposition is material
and effective.
-18-
In addition to the reasons urged in the min brief,
the Motion should ho denied fop the three reasons duet state I,
first, that the notion pap era do not contain a showing in
support of the notion; second, ho cause the notion papers
do not speoify whioh grounds of ohdeotion apply to which
speoifio portions of the Mauro deposition; and, third,
heoauad complainants' notion papers show that the Mauro
deposition is Material, and therefore my not he ex¬
punged as "scandalous".
Respectfully submitted,
_
(iClsf-fo' La_^-«MJe. r
Solioitors and of Counsel for Defendant.
;■ Dated, New York City, Hay 16, 1008.
May 25, 1908.
C. A. L. Hassle, Esq,,
Tribune S'J.dg.,
Hew York, N, Y.
Dear Sir:-
Please find enclosed copy of my brief in the
West Virginia Suits upon the motion to expunge, together with
oopy of letter to Judge Keller and proposed form of order, the
last two of which. I am mailing to Judge Keller to-day. Please
pardon me for not sending you copy of brief earlier,, aB 1 had
intended to do, but it had been overlooked owing to pressure
of over-work,
YourB very truly,
General Counsel,
hhd/chh
[ATTACHMENT]
May 25, 1908.
Hon. Benjamin P. Keller,
United States District Judge,
Bramwell, W. Va.
WEST VIRGINIA SUITS.
NATIONAL PHONOGRAPH COMPANY & N. J. PATENT COMPANY
AMERICAN ORABHOPHONE COMPANY.
Pursuant to the understanding had at the
hearing on the 20th inst., I teg to submit the following.
A copy of this letter haB been sent to Ur. Hauro, counsel
for the American Graphophone Company.
You will find enolosed a form of order
which I trust will meet your views and to make it clear -
why 1 have drawn the order in the form in whioh you find
it, it will be neoeosary for me' first to state what I under¬
stand your position to be in the matter* Of course,
<1>
[ATTACHMENT]
■)
Hon. Benj. tf. Keller- ' 5/25/08
my understanding may have been orroneoua, hut my recol¬
lection of your attitude ia the following:
* Hauro’s testimony has no hearing upon the
issues of ownership, validity and infringement of the
patents involved in theBe suits, when these suitB are
considered solely in their aspect as suite brought to
enjoin the infringement of patents, and in the consider¬
ation of these issueB no attention should he paid to this
deposition.
The issues involved in these oaseB aB patent
oases should he first determined. ‘ . If, upon the deteirmin-
ation of these issues, the finding of the Court is in favor
of defendant, and the Court is further oonvinoed that ijiBBO
Butts were brought without a reasonable expectation of suc¬
cess, then the deposition of Mauro may possibly beooijie rel¬
evant as tending to Bhow an effort to abuse the prooiss of
the Court and to harass defendant by the bringing of unfound¬
ed suits. Because of this possibility, I understand] you are
unwilling to expunge Mauro 's deposition from the reoord at
this time. ' •
H> .
Bhould the issues of these oaseB as patent
•i/ cases be found in favor of defendant, and should the far¬
ther finding be made that these suits are brought without
[ATTACHMENT]
. Benj. 3?. Keller-
5/25/08
reasonable expectation of Buooese, defendant e!\should have
the right to bring on the motion of which Mr. liieisfo has
given notice and on the hearing of that motion ehoul'^have
the right to make ubo of the testimony of Mauro alreadjK,
given, while oomplainants should have the right at that ti®?
to put in answering testimony. / ^
Mr. Dyer and I concur perfectly with yc|Ujf
attitude on the matter, if your vIowb are expressed by- the
above. Complainants are, in every way, willing to lalrly
and squarely meet any oharges which may be made againLt ,
them. Thoy desire, however, that the defendant Ve Lofc-
allowsd to prejudice them before the Court and the public^'',
by being permitted to include within the printed reeprd, oh
whioh these oases will bo decided in the first instance,
that is, in their aspeot as pure patent oases, any pioh
testimony as that which has been given by Mr. Maurd, but
that such testimony and its consideration be reserved until
the issues of ownership, validity and infringement of the
patents in suit have been disposed of. The printed re-
oord in these suitB, whioh is printed under the direction
of the iJlerk of the Court and is accessible to the public, is
a publio rooord and can be made use of for any of the var-
ious purposes to whioh publio reoords are put, laoLdlag
use for advertising purposes. Any possible use'of his
■' ' : . ■ ■ / 1-
[ATTACHMENT]
Hon. Benj. P. Keller- 5/25/08
evidence for improper purposes should he prevented. We
suggest , therefore, that an order he made, directing that,
for the present, the deposition of llauro shall he retained
in the custody of the Clerk of the Court, and that, for the
first hearing of those cases, a printed record he made up
which shall not, contain the Hauro deposition, and that if
a second hearing hecomes^ecossary, under the conditions
already named, upon themotion which counsel for defendant
haB given notice that he expects to bring, defendant should
have the right to put into that reoord the testimony of
Uauro already givon and complainants should have the right
to furnish testimony in their own behalf. In this way the
Mauro deposition would serve the only possible legitimate
purpose for which it could he used and its ubo for improper
purposes would he prevented.
If defendant has any right to bring on
such a motion at all, which we do not admit, it seems to
us that the dividing up of the oases in the way above sug¬
gested would he entirely proper and in accord with the pre¬
cedents, Boater's Federal Practice. Vol. 1, page 670-671,
recognizes the right of a court of Equity to take up so
muoh of a case as seems proper to it at one-time, leaving
the remainder to he deoided thereafter and on page 716, in
paragraph 325a, it is stated that an Equity Court has a right
"to add a clause to the decree giving a right to parties
to apply to the Court for <^er orders or directions 'at the
[ATTACHMENT]
Hon. BenJ. F. Keller- 5/25/08
foot of the deoreb1 ", And, of course, It is as-wfeil rec¬
ognized faot that Courts of Chancery may settle matters in
issue before them in such ways and divisions as seem propel*.
Furthermore, th^potion which Mr. Kauro has given notice that
he will "bring is in its nature a contempt proceeding as . it
is based upon the notion that complainants have abused the
process of the Court in bringLng these suits. A decision
upon a petition to attach for contempt, as you are of courso
aware, oannot be reviewed at all unless a fine 1b ordered to
bo paid to the petitioner and theri'it is taken up by writ of
error. For this reason the two actions should be separated
as it is extremely doubtful that the Circuit Court of Ap¬
peals would review the contempt proceeding if it wore taken
up on an appeal along with tho decision upon the Issues
raised by the ploadingB.
By* the "Deposition of Mr. MourC to which I
have referred above, 1 mean the entire deposition, ine lading
the first few pagQB which, as you will remember, were not in¬
cluded in the motion to expunge. 1 believe that you will
agree with me, however, that this portion/df the deposition
bears precisely the same relation to the remainder of the
testimony in these oases as does the portion which it' was
movod to expunge. In making tho motion we did not inolude
this first portion of Mauro's testimony, beoause it did not
appear to be as' clearly scandalous as that which followed ,
[ATTACHMENT]
Hon. Benj. ». Keller. 5/25/o8
but. if you aro of the opinlon that all the testimony of
Mauro should be treated alike, as we believe it should be,
there ie no reason why this should not be done, for the
Courrt has power to consider and dispose of a matter of : this
sorter its own motion. Kelley v. Boettcher, 85 Red. 55,
and *Sreen v. Elbert. 137 u. s. 615.
Respectfully,
[ATTACHMENT]
IN THE CIRCUIT COURT
OP THE UNITED STATES !
SOUTHERN DISTRICT
OP W. VA.
NATIONAL PHONO. CO.
) In Equity
VS .
: on Pat-
AMERICAN GRAPHO . CO ) ent 683615
NAT 1 L PHONO. CO. )
In Equity on
vs* :
Patent No.
AMERICAN GRAPH. CO.)
683,676
N. J. PATENT CO.
) In Equity
VS.
: on Patent
AMERIC .GRAPHO. CO.
) No. 831, 668 '
CCWLArMHTS^
IN SUPPORT OP
BHIW i
MOTION •
TO SUPPRESS DEPOSITION. •
Iff THH
CIRCUIT COURT OR THK OTITED STATES.
Southern District of Vest Virginia.
National Phonograph Company, )
Complainant, )
VB. )
American Graphophone Company,)
Defendant , j
In Equity On
Miller and
Aylsworth
Patent Ho.
683,615.
National Phonograph Company, )
Complainant, )
)
vs. )
American Oraphophone Company,)
Defendant,)
In Equity On
Aylsworth &
Miller Patent
Ho. 683, 676
New Jersey Patent Company,
Complainant,
VB.
Amerioan Oraphophone Company,!
Defendant,!
COMPLAINANTS’ BRIEF
Iff SUPPORT OP MOTION TO SUPPRESS DEPOSITION. 1
Thie is a motion to expunge the deposition
of Philip Uauro, a witness ^roduoed upon hohalf of the
defendant, for the reasons:
"1. That the said testimony 1b
soandalous, lmpertinont, incompetent
and inroatorial, is matter of opinion
and argument, is largely hearsay, and
[ATTACHMENT)
is designed to create an immaterial issue,
to oloud the real questions involved, and to
wrongfully and improperly prejudice the com¬
plainants herein.
2. That to meet the irrelevant and im¬
material issueB thus presented and to show
to the Court that the BtatementB of said
Uauro are untrue and unfounded in faot, as
. is in reality the case, which complainants
feel as a matter of self respect they should
do, if the deposition of the said Mauro he
not expunged, oomplainants will he put to
great trouble and expense in the taking of
depositions in reply, which will he extreme¬
ly voluminous, and will necessarily encumber
the rooord with a mass of equally immaterial
and irrelevant testimony, affording no light
to the court, and further oonfounding the
real issueB involved."
By stipulation of oounsel, the evidence
produood in any one of the above suits may he used in
all of the others, so that thiB motion refers to a mat¬
ter which is involved in all three of the suits.
These are ordinary suits for the infringe¬
ment of patents. Tho issues, as defined by the plead¬
ings, are the ownership, validity and infringement of
the patents in suit. Every deposition which has hoen
taken in these suits, with the Bingle exception of the
deposition of Philip Mauro, now sought to be expunged,
is confined to these Issues. The sole purpose of
(2)
[ATTACHMENT]
JIauro ' a deposition Is to defame the defendant corpor¬
ations, In order to prejudice them in the eyes of the
Court. The law is well settled that in oivil suite,
euch as those are, whore the character of neither of the
parties to the suit is in issue, charaotor evidence is
wholly inadmissible.
Morgan vs. Barnhill, et al. 118 P. R. 24.
TB7 <J7 A. 5th dircuitT:
"This is a oivil suit between private.,
parties. We find no reason for departing
from the general rule Whioh makes evidenoe
of tho charaotor of the parties inadmis¬
sible. 1 Whart. Ev. Sec. 47, and cases there
cited. The rule would, of course, be differ¬
ent in a oivil oaoe where the character of
a party was at Isbuo. Id. 8eo. 48. Tho cir¬
cuit oourt ruled correctly in excluding the
ovidenoe offered as to, the character of the
defendant. Givens vs. Bradley, 5 Bibb. 192,
6 Am. Deo. 646."
llor can tho introduction of oharaoter evidence in these
suits be Justified on the theory that it is intended to
show that the complainants oome into this oourt of equity
with unclean hands. This point has frequently been decid¬
ed in patent oases, and the law 1b clearly and succinctly
stated in Bansaok Machine Co. va. Smith 70 P. R. $84,
as follows:
"The charge that the complainants are
without equity, going, as it does, to the
Jurisdiction of the oourt, will be first
discussed. He who seeks equity must do
equity. Whoso oometh into a oourt of con¬
science must come with clean hands. Wo look
to the pleadings and facts of the case before
us. Tho issues are those: Do tho complain¬
ants hold letters patent of the United States
giving them the exclusive right to make, vend,
and use certain patentable devices? Have the
defendants infringed the rights thus granted?
If, in procuring those exclusive rights, or
if in thoir oxerolso the complainants have been
guilty of fraudulent or inproper oonduot to¬
wards these defendants, the fundamental princi¬
ples relied on would debar them of any relief
in this oourt. But, if in the absence of these,
(5)
[ATTACHMENT]
it is sought to deprive them of thair
remedy for the infringement of their rights
"because of thair motives in obtaining them,
or of thoir motiveo in assarting them subh
motivoB are not the subject of judicial inquiry.
Strait v. national Harrow Company. 51 Ted. 8l?.
' Sfii rule that one oomlng into equity must
oome with olean hands is oonfinod to the oon-
duct of the party in the matter before the
court, and not to matters aliunde. Courts of
equity, as well as courts of law, will not
refuse redreBa to the suitor because his con¬
duct in othor matters not then before the
court may not be blameless. It is enough if
the suitor shov/s that ho hao aoted justly,
fairly, and legally in the Bubjeot matter of
the suit.' Beach, Eq. Jur«, Seo. 16, and oaBes
cited. The inio.uity must have been done to
the defendant himself, and must have been
done in regard to tho matter in litigation.
1 Tom. Eq. Jur. 434. "
Soe also Bateman vs. Targason. 4 3?. R. 32.
Character evidence being inadmissible in these
oases, and therefore unnecessary to be alleged or proven,
it is Boandalous.
"Scandal consists in the allegation of
anything which is unbecoming the dignity of
the Court to hear, or is contrary to good
manners, or whioh ohargos some parson with
a crime not noceaoary to bo shown in the
cause; to whioh may bo added, that any un¬
necessary allegations bearing cruelly upon
the moral character of an individual is also
scandalous." (Baniell's Chancery PI. and Tr.
Amer. Ed. p. 347.)
This definition is adopted by the Circuit Court
of Appeals for tho eighth circuit in Kelley vs. Boettcher,
85 S’. R. 55.
The scandalous and outrageous oharaotor of this
deposition is greatly increased by the faot that the
deposition waB given by Philip Kauro, who is also <jf:
counsel for defendant, when there was no adequate reason
why he ohould testify at all. Certainly, if a deposit-
(4)
[ATTACHMENT]
ion of this sort wore to "be given at all, it could, have
been just as wall given by one of the officers of the da
fondant oorapany. Wo believe that the oourt would be
amply Justified in expunging this te utimony on this
ground alone. She Code of Legal Ethics of the Bar
Association of West Virginia, in common with similar
oodeB of other states, contains the follovring section
both the letter and spirit of which havebeen violated
by Mr. Hauro in giving this deposition:
"Whore Attorney Becomes
Witness of his Client:— When
an attorney 1b a witness for
his clients except as to for¬
mal matters, suoh as the attest¬
ation or oustody of an Instru¬
ment and the like, he should
leave the trial of the cause
to other counsel. Exoept
when essential to the ends of
justice, an attorney Bhould
scrupulously avoid testifying
in court* behalf of his clients,
as to any matter."
(5)
[ATTACHMENT]
THE NATURE 01’ THE MAURO DEPOSITION.
The deposition of thw witness Mauro, to which
this motion relates, was taken in January, 1908, in the
absenoe of counsel for complainants, the rights of objec¬
tion and cross-examination bBing reserved. Mauro, who
as already stated is also of counsel for defendant, ohose
to give his deposition in the form of a long and somewhat
rambling statement, and not in the form of questions and
answers. Eor this reason the objections had all to be
made together at the close of the deposition instead of
to eaoh scandalous statement as it was made, but as this
arrangement was of Mauro*s own ohoosing, he and his clients
should not be permitted to take advantage of this fact. Ir
this deposition Mauro reoited all that he knows or has
ever heard about all of the litigation which has been carr¬
ied on between complainants and defendant, and alBo betweer
complainants and other parties, the latter being entire
strangers to the defendant in the Buits now before the
Court. The statements in the depositions are clearly in¬
spired by malice, are unfair and are intended to besmiroh
the oharaoter p’f the oomplainant corporations and of
Thomas A. Edison. One reading this deposition will obtair
the impression that the complainants are semi-criminal i
that they willfully violate injunctions of the Courts; that
they willfully institute litigation for whioh they know
there is no basis; that they are wholly unfair in their
competition, and that they have a reputation in the
Courts in certain Districts whioh forbids them applying
[ATTACHMENT]
for any relief in these Districts. Bio obvious purpose
of the v/holo deposition is to prejudice the Court against
complainants and to distract attention from the real
questions in issue. As a matter of fact and as as
appears to a considerable extent from the Cross-exam¬
ination, if the entire truth of the matters touched on
by Mauro v/ero made known it would bo apparent to the
Court that his strictures upon the oharaoter of complain¬
ants and of Mr. Edison are entirely without foundation.
For the purposes of this motion, however, wo shall oon-
tent ourselves with pointing out the scandalous nature
of what is contained in this deposition.
"The irorth American Company"
Referring to the deposition specifically, it
will bo found that, beginning at line 17 of page 5, the
witness liauro has first disoussed the relations exist¬
ing between the Edison Phonograph Works, the National
Phonograph Company and the llew Jersey Patent Company, and
seeks to give the impression that the North American
Phonograph Company was unfairly and unlawfully manipu¬
lated so as to transfer the patents of Mr. Edison to the
New Jersey Patent Company. All the patents in suit have
been taken out sinoo the dissolution of the North American
Phonograph Company so that it is obvious that this testi¬
mony is wholly irrelevant and scandalouB.
"liooal Company litigation11
On pages 6 to 9 of the deposition, the witness
sets out what purports to be a history of the litigatihn
between the North Amerioan Phonograph Company and Certain
[ATTACHMENT]
of its licensees, particularly the Hew York Phonograph
Company, and also of the litigation botv/een the Columbia
Phonograph Company and certain persons with whom the
national Phonograph Company was made a party defendant.
This portion of the deposition is filled with remarks
that by their innuendo necessarily are BcandalouB. At¬
tention is particularly directed to line 13, et seq. of
page 8, in which the witness says:
" Judge Hazel traoked the title of the Edison
patents to the north American Phonograph Company,
baok again to Edison after the failure of that Com¬
pany at a time when Hr. Edison was its president,
and from him to the national Phonograph Company."
At line 3, et seq. page 9, the witness says:
" The principle of these decisions would have and
should have put the national Phonograph Company out
of business, it haring been decided by the highest
courts of the land that the purpose for whioh it
exists and the business it is carrying on is un¬
lawful. But this Company apparently cares as little
for the mandates of the oourts as for the rights of
its competitors."
These sentences are quoted merely to indicate
the nature of the testimony and are by no means the only
objeotionable portions, all of the matter within the
pages above referred to being scandalous and impertinent,
having no possible bearing upon the issues before this
Court. The witness himself at line 18 of page 9 tells
why he has given this testimony, saying:
"The foregoing history is sufficient to explain
why the national Phonograph Company in no longer
dares go into the Courts of the Seoond Judicial
Circuit to seek their aid in the furtherance of its
inequitable oampaign against this defendant. Its
origin, career and character as a litigant are too
well known to the Judges of those ! CourtB to give it
any prospeot of success. Its only possible ohance
would be in a Court where itB reputation is unknown."
8.
[ATTACHMENT]
This quotation makes it olear that the witness
is attempting to bias the mind of the Court againBt com¬
plainants, and furthermore contains a Boandalous imputation
that the Courts of the Second Circuit are unable to give a
fair and impartial deoision in suits to which complainants
are parties.
”Thc Reproducer Suit"
Erom pages 9 to 12 inclusive, under the head .of
"The Reproducer Suit", the witness sots out a biased,
partial and soandalous statement which purports to be the
history of certain suits brought by complainants against
defendant before Judge PLATT, in the District of Connec¬
ticut. Aside from the scandal injected into this testi¬
mony by the direct statement and innuendo of the witness,
which occurs throughout this portion of the testimony, it
le perfectly obvious that any litigation%ht have been
instituted by complainants for infringement of any patent
fcr a reproducer, which is only one portion of the phono¬
graph, can have no possible relation to the issues raised
in suits brought on patents which involve methods and ap¬
paratus for molding sound records to be used on the phono¬
graphs.
"Molded Record Suits"
S*om page 12 to page 19 of the deposition, the
witness under the head of "Molded Record Suits- injects
into this case what purports to be a showing of the "di-
reot attempts of the Edison Company to destroy defendant <s
business of molding sound records, ojfe to interfere with
defendant's use thereof." He then enumerates eight suits
9?.
[ATTACHMENT]
which have been brought against defendant by complainants
in the suits now before this Court and seekB to give the
impression that each of these suits was baseless and in¬
stituted maliciously with the intent of destroying the
defendant's business. This portion of the deposition is
furthermore filled with hearsay and immaterial matter
in reference to the prosecution of the application whioh
matured into letters patent No. 831, 668 now in suit. Vot
these matters, it is obvious that the reoordB of the Patent
Offioe are the proper evidenoe. Wherever the Joyoe ap¬
plication is referred to, it is done in an attempt to show
that the application was manipulated for unlawful purposes
by complainants by injecting olaims into the application
which were for substantially the same subject matter on
which complainants had been defeated in prior suits.
"Cross Examination11
The cross-examination by Mr. Dyer will give
the Court an idea of the nature and extent of the tes¬
timony whioh must be introduced into the case if it
is attempted to supply full and complete information on
all the subjeots about which Mr. Mauro has testified.
Such a record would be of enormous length and if com¬
plainants should also put in evidenoe all the facts
in their possession regarding the improper practices
of defendants, which would be the logioal s equal of Mr.
Mauro »s deposition, the reoord wouldbe made well nigh
interminable, without , however, affording any light
whatever on the true issues before' tiioj Court for de-
oision. Yet, as a mere matter of Eiieif respeot, this
is the Bourse whioh complainants musit follow if the de¬
position of Mauro be allowed to remajinvin the record.
10.
[ATTACHMENT]
In passing we pause to remark; that it appears
from the cross-examination that Ex Judge WALLACE of New
York, after having been completely informed of the Hew
York Phonograph Company litigation, mentioned hy Mr.
Mauro, expressed the opinion that the conduot of Mr.
Edison and the National Phonograph Company was beyond
reproach and that Mr. Edison had been made the victim of
malignant and slanderous persons who sought to Injure
him ( x-Q.55 ); that defendant has brought a number of
suits on its patents against complainants, indicating that
it is engaged in a campaign of enforcing its patents, al¬
though Mr. Kauro objects to the prosecution of a similar
"campaign" by complainants ( x-Q.68 - x-Q.70 ); that
defendants through Mr. Mauro have made frequent endeavors
to effect a combination with complainants ( x-Q.78 - 9g)
which is hardly to have been expected if there were any
real basiB for Mr. Mauro 's sweeping condemnations, and,
finally, mention is made ( x-Q.103, 4 and 5 ) of certain
suits in the District of Hew Jersey brought by defendant
against the National Phonograph Company, where the defense
was that Macdonald, defendant's factory Superintendent,
had stolen the secret composition of complainants , had
it patented and then brought suit against the National
Phonograph Company on the patents. Mauro disavows any
knowledge of this matter, and says this suit is in charge
of his associate, Mr. Massie, but as Mr. Mauro recently
argued these cases on final hearing, it is likely, if
questioned now on that subject, he would admit a greater
knowledge of them.
11.
[ATTACHMENT!
After the cro ca-examinat ion, whioh v/aa made by
counsel for complainants, without waiving the objections
intorpoflod to the diroot testimony of the witness, Mauro ,
the latter emphasized the totally reoklosa spirit which
ohc.rnotorlf.ed Ms diroot testimony hy adding thereto
further so-called redirect testimony, in whioh ho inject¬
ed additional scandalous and impertinont matter into the
record of this court and which, as a member of the Bar,
ho must have known could have no possible bearing on the
issues or the equities to be considered by this Court.
Shis redirect examination demonstrates the absolute malice
of the v/itness, since in tho last portion, under the title
"Edison vs. Thomas a. Edison, Jr. Chemical Company", he
makes a diroot attaok upon the reputation of Hr. Thomas
A. Edison, A more inspection will show the scandalous
and malicious character of this portion of tho deposition.
Moreover, under the heading "Helm Suita" the
v/itness makes scandalous allegations to tho effect that
tho complainants have carried on malicious suits against
tho How York Phonograph Company.
The oourt will have no difficulty in seeing
that in those portions of the deposition objootod to ,
and whioh are referred to in tho motion to expunge , the
witness was animated by malice; had no desire to inform
the mind of the Court upon any issue now before it, but
hoped and intended to so booloud the issues Involved and
so besmirch tho oharaotor of tho ooraplainants, their
officer s and counsel, that the mind of the Court would
be misled as to tho real issues in these suits and bo
prejudiced against tho complainants heroin.
12.
[ATTACHMENT]
THE COURT HAS POWER
TO EXPUNGE DEPOSITIONS FOR SCANDAL.
Bleaae vs. Qarlington. ?2 U. S. 1 - 10,
decided March 20, 1876, ia the oaae upon which all sub¬
sequent deoiaiona regarding the admission of evidence
in equity suits in the Federal Courts have been based.
That was a suit on a bond and mortgage; an offer was
made to adduce evidence showing certain collateral agree¬
ments and conditions relied upon in the giving the^ncL
for which tho mortgage was security. The Court below
excluded this evidenoe, but the record included a paper
stating what it was offered to prove. The Supreme Court,
in finally dispoBingof the oase, considered what waB
offered to be proved and held substantially, that it was
immaterial and irrelevant and if proven could not have
affected the decision, and accordingly affirmed the
decision of the Court below. The Court went on to set
out the practioe which should be followed as to the ad¬
mission of proofs in equity oases, but for the proper
understanding of this decision it is important to remem¬
ber that the Court was dealing with evidenoe which, while
it was immaterial and irrelevant, was not objectionable
for any other reason. The following is the practice, as
prescribed in Please vs. Garlington:
"Since the amendment of Rule 67,
in l86l, there oould never have been any
difficulty in bringing a case here upon appeal
bo as to save all exceptions as to tho form
or substanoe of the testimony, and still leave
us in a condition to prooeed to a final deter¬
mination of the cause, whatever . might be our
rulings upon the exceptions. The examiner
(13)
[ATTACHMENT!
before whom the witnesses are orally examined
is requirod to note exceptions; but he
oannot decide upon thoir validity. He must
take down all the examination in writing, and
send it to the oourt with the objeotionB
noted. So, too, wheh depoaitiono are taken,
aooording to the Aots of Congress. or otherwise,
under the rules, excoptionB to the- testimony
may bo noted by the offioer taking the depo-
aition, but he is not permitted to deoide
upon them; and when the testimony aa reduced
to writing by the examiner, or the deposition,
is filed in oourt, further exceptions may be
there taken, Thus both the exceptions and the
testimony objected to are all before the court
below, and oome here upon the appeal as part
of the record and proceedings there. If we
reverse the ruling of that oourt upon the
exceptions, we may still proceed to the hearing,
because we have in our possession and oan con¬
sider the rejected testimony. But, under the
practice adopted in this case, if the except¬
ions sustained below are overruled here, we
muHt remand the cause in order that the proof
may be taken. That was done in Conn v. Penn
(supra), which was deoided before the promul¬
gation of the rules. One of tho objects of the
rule, in its present form, waB to prevent the
necessity for any such practice.
While, therefore, we do not Bay, that,
even since the Revised Statutes, the circuit
courts may not in thoir discretion, under the
operation of the rules, permit the examination
of witnesses orally in open court upon the hear¬
ing of cases in equity, we do soy that now they
are not by law required to do so; and that,
if suoh practice is adopted in any case, the
testimony presented in that form must be taken
down or itn substanoe stated in writing and made,
part of the record, or it will be entirely diB- *
regarded here on an appeal. Bo, too, if test¬
imony is objected to and ruled out, it must
still be sent here with the record, subject
to the objection, or the ruling will not be
considered by us. A case will not be Bent
back to have the rejected testimony taken,
oven though we might, on examination, be of
the opinion that the objection to it ought not
to have been sustained. Ample provision having
been made by tho rules for taking the testimony
and saving exooptions, parties, if they prefer
to adopt some other mode of presenting their
oase, must be oaroful to 3ee that it conforms in
other respects to the established praotice of 1
the court."
This decision was approved and followed in
•Kelson v. United States. 201 V. 8. , 112-115, in whioh
oase, as in BleaBe v. Oarllnaton. the principal object¬
ion was the immateriality of the ovidenoe to be consid¬
ered. On this point MR. JUSTICE MC HENNA said:
(14)
[ATTACHMENT]
11 Tho claim of immateriality of the testimony
cannot avail plaintiffs against the orders of tho
olrouit oourt. Tho procedure before an examiner
and hin poviero arc oxpl&inod in Bleaoo v. Carlins-
ton. 92 U.S. 1." - - - u
Tho above are tho only decisions of tho Supremo
Court on thio oubjoot, but tho leading oaoo of Bleaae v.
.Garlington hao boon conotruod many times by the . Circuit
Courts and Circuit Courts of Appeal. There are two
classes of cases in which tho dootrino of Bleaae v. Car-
lington has boon applied} (1) where the courts have been
ashed to cornel a witness to answer questions or to pro¬
duce recordo or documents in evidence, and (2) those oases
in v/hich motion lias boon made to suppress testimony already
talcon. Vo shall oons'idor those two olasses of cases
separately.
1.
The caso of Belson v. U. s. Supra v?as of the
first olaos named. Tho witness refused to answer ques¬
tions, which tho Court had ordered him to answer, and he
was attached for contempt. He attempted to justify his
refusal to answer on tho ground that the matter inquired
into was immaterial, but tho Court said that under the
authority of Bloase v. Oarllngton tho answer must go into
tho reoord, notwithstanding it was claimed to be immater¬
ial.
Zunkol v. Lit oilfield, 21 Pod. 196 (1034)
This oaoo was hoard on exception to interrogatories. Tho
Interrogatories wore referred by tho Court to a Master for
report. There can bo no doubt, upon a reading of this
decision, that tho Court ordered the reforonoo beoause ho
[ATTACHMENT]
ooriaidorcd matters inquired into by tUo interrogators
to lie noan&aloua and impertinent, and that they oould not
tove any Soaring on the iarn 03 of the case in any view
thereof. In tho course of the opinion tlio following
statement wan made:
" ®ioro oan bo no aorioua difficulty whoro tho
interrogatories involve matter of mere scandal and
Impertinence, wholly foreign to the controversy. II
is well nettled practice to rafor the pleadings to
the J, Taster to purge then of scandal and importinonco.
ODiere is no doubt that interrogatories my bo re¬
ferred for the oane reason."
Sdloon So. va. 17. n. Co. ,44 Ped. 294; 45 Pod.
55 (1391) , In this case it was sought to compel the
production in evidence of on application for patent pend¬
ing in the Patent Office which it was urged would have
the effect of narrowing the claims of the patent sued on.
She defonso made was tliat this ovidonoo was privileged and
immaterial. The Court found that it was not privileged
and tliat it was sufficiently material to form part of the
record under the authority of Please v. Garlington.
lloyd v. Fannie. 50 Pod. 4,(1892): 2ho pro¬
duction of certain letters vmo opposed on tho ground of
privilege, but tho Court found thoy wore not privileged
and compelled their production, "without preludioo to
tho right [of the dofondant to ronew the plain of privilege
hereafter, by a motion to supprosB tho lottora. at tho
proper stores of tho proceedings."
Hho William v. Conn. Co. 119 Pod. 509 (1902); Pro¬
duction of oopion of an abandoned application for patent
was oppo'sod on tho ground that its subject matter was not
relevant or material. Tho Court compelled its production
notwitlijjtandlng tills objeotion.
16,
[ATTACHMENT]
Whitehead & Hoag Co. v. O'Oallahan. 130 P. R. 243,
(1904) In thla oase a witneBB was compellod to answer
over the objection that the question was not proper
cross examination. Apparently the real point in the
decision is that in thi« circuit (Philadelphia) the orose
examination need not be oonfined to the scope of the
direot examination and that for this reason the question
was proper to he asked.
Perry v. Rubber Tire Co.. 138 P. R. 836, (1905):
The syllabus is:
"The general rule is that witnesses
v/hoee depositions are being taken under
Rov. St. Seotion 863, should be required to
answer all questions which may possibly be
material, subject to their right to be
proteoted in their constitutional privileges".
Butte Co. v. Montana. 139 T. R. 843, (1905), The
questions certified y fere required to be answered although
it was urged that they were immaterial. (Judge LACOMBB ,
in his decision in this oase, condemned the practice of
admitting immaterial evidence in equity suits in the
Pederal Courts^ but oonBidered that he was bound to
follow the precedents.)
Dowaglao Co. v. Loohren. 143 P. R. 211, C. C. A.
8th Circuit * ( 1906 j') This was a case where testimony
was being taken in one district for use in another.
Application lirfis made to the Court to compel the answer of
certain questions by the witness. The Court reviewed
Bleasefiv/ Garlington and all subsequent oases and announc
ed the following as its oonolusion as to the law on thiB
subject: / •
(17)
[ATTACHMENT]
"It is the province and the duty of the
Circuit Court to elicit and transmit to the
appellate oourt, not only the evidence it
deems oonpetent, relevant, and material, hut
alBO that which it decans incompetent, irrelevant,
and inmaterial, to the end that, if the reviewing
court is of the opinion that the evidenoe deemed
inadmissible by the Circuit Court should have
been received, it may at onoe consider it and
render k final decrde without the delay of re¬
manding the case to procure the rejected evidence.
To this general rule there are two emo option a.
They are that it is the duty of the oourt or
ohanoeUor eliciting the evidenoe to consider and
determine the claim of privilege of a witness or
other partjr and to refuse to compel him to produoe
evidenoe in violation of it, and that, if it
clearly and affirmatively appears that the evidence
sought oaanot possibly be competent, material, ,or
relevant and that it would be an abuse of the
process of the oourt to compel its production, it
may refuse to do so. n
II.
Appleton v. Eoaubert. 45 P. R., 281,(1891: )
This was a patent suit and testimony had been taken of
occurrences in the Patent Office before the issue of the
patent, in suit. Motion wae made to suppress the depos¬
ition, and to stop the taking of further testimony of
this sort but the Court denied the motion- because it
considered that the testimony might be regarded aB mater¬
ial by the Appellate Court.
Adee v. Iron Works. 4$ P. R. 39, (1891) : In
this case oertain evidence was suppressed, tho reasons
are not given.
Payerweather v. Hitch, 89 P. R. 529;
Parisian Comb Co., v. Rschwege. 92 P.R. 721;
Maxim Co. v. Colts Mfg. Co.. 103 P. R. 39;
In these oases, (deoided 1898 - 1900) , motions
to suppress testimony were denied where the objections
were that the testimony sought to be Btruok out was ir¬
relevant and immaterial.
(18)
[ATTACHMENT]
Brown v. Vorster, 115 J. R. , 20, The Judge regarded it
as doubtful whether this testimony sought to have expung¬
ed was proper cross examination, and refused a motion
to strike it out for this reason, saying that it oould
he disposed of as a question of costs. As to improper
cross examination, he observes, however, “Where the
offense is dear, the Court haB ample power to stop it
summarily. "
Thomp son-Houston v. Jeffrey Co.. 83 R. R. 614': This was
a patent suit in which, after a witness had given Mb
direct deposition and was being cross examined, counsel
who had produoed him objected to the questions asked, and
persistently instructed the witness not to answer. The
objections made to the questions were that they were im¬
material, irrelevant and hypothetical. Motion was made
to stdke the deposition from the fileB,or to compel
the witness to answer the questions put on cross-
examination. The Court, after reviewing the evidenoe,
the questions proposed and the authorities on the sub-
J eot , says :
"For the reason stated in Blease v. Gar-
lington, CourtB do not suppress testimony
unless llPbe grossly anTflagrantly Impertinent
and scandalous! The result of suppressing is to
expunge the testimony from the record, wMch
would deprive the party affected of opportunity
for relief in the Appellate Court." .
"I will not say that upon an appeal to a "Federal
Judge a Vexatious, unreasonable, or unconscionable
examination of witnesses will not be put a stop to,
or that a witness may not, pleading privilege,
refuse to answer and make an appeal to a Federal
Judge for instructions necessary; but I do say
that the assumption by counsel of authority Buch
as has been claimed and exercised in thio case will
not be tolerated in this court. The motion will
(19)
[ATTACHMENT]
Tie granted. The entire deposition of E. II. Bentley
will he stricken from the files, and further
testimony for the complainant (its time for testimony
in-chief having expired) will he allowed only upon
the condition of its first reimbursing the defend¬
ants their costs and expenses by reason of the
taking of said deposition."
Griffith v. Shaw. 89 3?. R. , ?13> Thin wa s
a patent suit. Under the undisputed authorities,
defendants were estopped from denying the validity of
the patent in suit. Hevorthelo ss , they embodied in
paragraphs 14 to 18 inclusive of their answer, a denial
of the validity of the patent. They then proceeded to
take testimony in support of these paragraphs in the
answer. notion was mode to strike out suoh evidence
and this motion was granted, the Court saying:"
"The Court may not permit its
files to be encumbered and liti¬
gants before it to be uselessly
and willfully annoyed, harassed
and burdened with the taking of
evidonoe plainly inapplicable to
the legitimate issues before it,
and whose taking is for an entire¬
ly different object, one not connected
in any manner with the litigation
before it."
These authorities clearly show that, while
the general rule is that immaterial evidence will not
be suppressed on motion when taken in a case in equity
in the federal Courts, yet this rule is subject to two
exceptions, and testimony will be suppressed when it
appears (I) that suoh evidonoe haB no bearing whatsoever
upon the issues to be decided and cannot possibly be
held to have any suoh bearing by an Appellate Court;
and (2) thaft the evidence so taken is impertinent and
soandalous and an abuse of the prooess of the court.
Coming, aB it does, within each of these exceptions, we
(20)
[ATTACHMENT]
submit that the deposition of JXauro should he expunged
from the reoord.
Defendant may suggest that the determination
of this motion should he postponed to final hearing.
If it were necessary for the Court to consider the
whole evidence in all of the throe cases in order to
decide this motion it would perhaps he proper that its
decision should he put off until that time. But the
deposition of Mauro stands out by itself. There is
nothing in the oase to which it has any relation what¬
ever. Under these circumstances this matter should ho
determined now, particularly since if in allowing it
to renain in the record will necessitate the taking of
a great mass of additional testimony which will he
useless if it is decided at that time that thiB depos¬
ition should he expunged. In the case of Thomp son-Kouoton
Co. v. Jeffrey Co.. 85 F. R., 614, above referred to,
the court struck out the scandalous testimony on motion
ao soon as its attention wbb oalled to it. Tills proced¬
ure, we submit, is the only adequate way to dispose of
this motion.
Of Counsel.
Solicitors for Complainants.
(21)
Samttrmt district nf Blest Btegiitin,
Benjamin F. ’Ktlfer, |udge,
BramracII, TO. Bn.
■' '=*
v7 '?/&
I’f.
, — -oXX/Ls^r-v .
ffc ’ -XjceXM^AX" vSc£- i&aj~ 4t/~£uxX- *
[ENCLOSURE]
Messrs. Philip Mauro and
iltuied States gistrict (Kauri,
Snutlferu gistrirt xrf TOest Virginia,
Benjamin F. Biller, -Judge,
BrmutucII, W. 3Ja. ,, . „ _
May 2 7 1908.
154 Nassau st. , N.. Y.
He National Phonograph Co. v. Am. Graphophone Co. (two suits)
New Jersey patent Co. v. " « «
Qentj/lemen:-
1 a0£Pwl0(*se receipt of your letter of May
I8th- » enclosing bgief in opposition to. th?. potion , of ..plaintiff a
in above suits to expynge a portion of the deposition of your Mr.
Mauro, and to say^hat on the date set, for-ths^Jieerinj^. of this
motion Mr. Dyke, appeared in support thereof, ijn^J, delivered to
him a copy .of your brief.
\ • ’ *-'• • • ■ - ge«vafj-<fo- o.::
While I have not felt Justified in sustaining tliis.. motion at
this time, neither Rdo I feel that .,1 .ought at,thi„, time to put upon
the plaintiffs the present burden of taking any. proofs to meet
these charges, whiph can only become material fo ib any purpose in
the event that upon final hearing I find- reason to, believe that
these suits were brought in continuation of a course of conduct
such as is charged against plaintiff in the depositlidn. In other
W0^.,* even if it. 'be true that, in the .past, vexations and
harrasBing litigationo haB been instituted by the plaintiff against
defendant without equity, yet, unless the court' can say that
these suits are of that character, no power resides in this court
to punish for such conduct.
[ENCLOSURE]
-United States District (ttnnrt,
Smillfcnt District of West Virginia,
Ticnjmntu F. gntlgc,
# 2. Hmmwcll, W. Hlit.
It is manifest that this court therefore cannot tell whether
a prima' facie case has hoen made for the infliction of a penalty
until these cases have been submitted for final hearing and the
case been thoroughly gone into. I therefore conclude that I Bhould'
not now require plaintiffs to meet the matter raised by this depo¬
sition, ’nit, without expunging the deposition, allow the whole
question to go over until I have heard these oases upon their
merits, leaving the questions raised by the deposition, and notice
given by Mr. Mauro, pending until I can decide whether, prima
facie, these suits are of the character denounced in the deposi¬
tion. If I consider that they are not, there will be no need to
answer Mr. Mauro* s deposition. If I decide that thiB question
Bhould, in the interest of Justice, be gone into, I see no reason '
why it m&y not be done as a suppleim ntary matter, after a hearing
of these oases on their merits.
As. a matter of course if I should sustain these patents sued
on, I could not punish the plaintiffs for bringing these suits, so
that it is impossible to say;? in advance of a determination on the
merits, whether the deposition objected to can have any relevancy
or materiality.
Haying this vievr^I would suggest that a stipulation as to this
matter might be made between counsel to the effect that the matters
raised by the deposition and motion of Mr. Mauro and the motion to
expunge, be continued until after final hearing, with the right to
[ENCLOSURE]
United States District (tort,
Sxrutljerit District West Virginia:,
Benjamin F. 3feller, gndge,
#3 Brmnurelt, TO. Ua.
plaintiff ■o, in the event that the court should he of opinion that
a prima facie case has been made for the imposition of a penalty,
to .take evidence to answer such prima facie case.
I hope that some such course can he agreed upon, aB, if it oan
not, I shall he obliged to pass an order to that effect, and would
greatly prefer that it take the form of a stipulation.
I am-sending a carbon copy of this letter to Mr. Dyer.
ifery truly yours,
^ /'/Vr-eja
Frank I >. Dyer, Usa- >
Mia on "laboratory,
Grange , N..T.
Sear Mr. flyer: -
VIRGINIA SUITS. Enclosed find copy of latter I have
written to. Jfudge Keller. I will take up ny deposition as soon aa
poaaihle, and adviae you of the facta which I wish ~to have stipulated
into the record. aa made up for final hearing.
KI-H.
Yours very truly,
[ENCLOSURE]
Hon. Benjamin P, Keller,
United states Jades,
Braswell, W. Va.
. HASIOHAIi PHONOGRAPH 00. T. AMERICAN GRAPHOPHONB CO., '
(On Miller and Aylsvrorth Patent); ’
SAMS t. SAM, (On Aylswolrth and Hiller Patent) ;
JWSBy SAsnni* co. ?. ahbrxcan rjuphophonb co.,
ion Joy 0.5 Patent i » .
With reference to the mot ion of complainants in to.ese
oases to exclude the deposition of Mr. Hauro taken "on behalf of
defendant, I hare had a talk today with Mr. Byer, eonjplttinants*
counsel, as the result of which we are both of tho opinion that
we oan arrange a stipulation which will satisfactorily dispose
of the matters raised by this motion. At Mr. Dyer's request,
I am writing this to save you the trouble of giring any further '
consideration t<> the matter until you hear from one or the other
of us again. 1 wadftending a copy of thin letter to Mr. Dyer.
Very respectfully,
Of Counsel for defendant..
P.S. Since writing the foregoing, your letter of the
?>?th inst. has been received.. It would' seem that counsel had
forestalled your Honor's suggestion^; or.-ntflow .versa as yow
letter was written- first.' '
Le^o.1 Bo* \rj/
United States Circuit Court
SOUTHERN DISTRICT OF WEST VIRGINIA
In Equity on
Letters Patent
No. 083,(515.
National Phonograph Company,
Complainant,
American Gkaphophone Com pany
' Defendant.
New Jersey Patent Company,
Complainant, f in Equity on
j,8; > Letters Patent
American GitAPiiornoxB Company, (‘No. 831,008.
Defendant . J
CONSOLIDATED RECORD
In Equity on
i Letters Patent'
No. 083,070.
National Phonograph Company,
Complainant,
American Grapiiopiione Company,
Defendant.
Peteii Weiier.
Direct examination . 16
Cross examination . 20
Re-direct examination . 24
Defendant’s stipulated admission of its prac¬
tice in molding phonographic records . 25
L. Seward Bacon.
Direct examination . 27
Cross examination . 43
Re-direct examination . 73
Complainants’ prim a facie case on Letters
Patent No. 0S3,G15, closed . . 73
BILL OF COMPLAINT ON LETTERS PAT¬
ENT NO. GS3,G7G . 74
Answer on Letters Patent No. 683,676 . 81
Replication on Letters Patent No. 683, G7G. . . 87
Stipulation for use of testimony and exhibits
in companion suit on Letters Patent No.
"1,616 . 89
Direct examination . 90
Cross examination . 94
Re-direct examination . 97
Stipulated admission of defendant’s practice
of molding phonograph records. . . 99
INDEX.
Page.
BILL OF COMPLAINT ON LETTERS PAT¬
ENT NO. 683,615 . 1
Answer of Defendant on Letters Patent No.
683, G15 . 7
Replication on Letters Patent No. 683,615 _ 14
Stipulation for use of testimony and exhibits
in companion suit on Letters Patent No.
GS3,G76 . 15
ii
Page.
L. Seward Bacon.
Direct examination . 100
Cross examination . 117
Complainants’ prima facie case on Letters
Patent No. 083, 07G, closed . 119
BILL OF COMPLAINT ON LETTERS PAT¬
ENT NO. 831, 0G8 . 120
Answer on Letters Patent No. 831,008 . 127
Replication on Letters Patent No. 831, 0G8. . . . 134
Joseph F. McCoy.
Direct examination . . 135
Cross examination . 140
Re-direct examination . 148
Peteu'Weber.
Direct examination . 150
Cross examination . 157
Stipulated admission of defendant’s practice
of molding phonograph records . 161
Thomas II. Macdonald.
Direct examination . 105
Cross examination . 160
Re-direct examination . 167
Delos Holden.
Direct examination . 168
Cross examination . 182
Complainants’ prima facie case on Letters
Patent No. 831, 008, closed . 211
DEFENDANT’S PROOFS.
Stipulation consolidating the three suits on
Letters Patent Nos. 683,615, 683,676 and
831,068, for taking of proofs, etc., from this
point on, and providing for introduction of
testimony from Connecticut suits . 213
iii
Page.
Introduction of depositions of E. E. Norton,
T. H. Macdonald, A. A. Stevenson, F. H.
Osborne and Thomas A. Edison from Con¬
necticut suits . 213
Thomas H. Macdonald.
Direct examination . 214
Cross examination . 223
Stipulated testimony of Philip Mauro . 230
Objections to Mauro’s testimony . 230
C. A. L. Massib.
Direct examination . . . 237
Objections to Massie’s testimony . 284
Cross examination . 285
Re-direct examination . 300
Defendant’s proofs in the three consolidated
suits closed . 321
COMPLAINANTS’ REBUTTAL PROOFS IN
THE THREE CONSOLIDATED CASES. . 322
Martin Shannon.
Direct examination . 322
Cross examination . 325
Stipulation for retention of exhibits by the
party introducing same . 328
Martin Shannon {Recalled).
Direct examination . 328
Cross examination . . 328
Re-direct examination . 330
Maurice Joyce.
Direct examination . 333
Cross examination . 346
Re-direct examination . 364
Re-cross examination . 367
Maurice E. Joyce.
Direct examination . .
Cross examination . . .
Stipulation .
WAI/TER II. MILLER.
Direct examination . .
Cross examination . . .
Alexander N. Peesrman.
Direct examination . .
Cross examination . . .
Arthur S. Browne.
Direct examination . 414
Cross examination . 4GG
lie-direct examination . 508
Be-cross examination . 510
Stipulation ns to material used liy Joyce . 511
Robert Fletcher Rogers.
Direct examination . 512
Cross examination . 517
Stipulated testimony of David Dodd . 518
Stipulated testimony of Frank L. Dyer . 51S
Complainants’ proofs in three consolidated
cases closed . 531
LIST OF COMPLAINANTS’ EXHIBITS.
Introduced
AT PAGE
Patent No. 083, G15 in suit . 15
Defendant’s Apparatus Drawing No. 1 . IS
Defendant’s Apparatus Drawing No. 2 . 18
Weber’s Reproduction of Defendant’s Mold. . . 20
Weber’s Reproduction of Reaming Tool . 20
Patent No. GS3,G7G in suit . 89
Defendant’s Apparatus Drawing No. 1 . 91
Defendant’s Apparatus Drawing No. 2 . 91
McCoy Report . 139
Patent No. 831, GG8 iu suit . 149
Defendant’s Apparatus Drawing No. 1 . 151
Defendant’s Apparatus Drawing No. 2 . 152
Defendant’s Apparatus Drawing No. 3 . 153
Commercial Joyce Apparatus . 327-32S
Joyce Mold No. 1 . 330
Joyce Mold No. 2 . 330
Joyce Mold No.' 3 . 330
Joyce Base No. 1 . 33G
Joyce Base No. 2 . 330
Joyce Core . 330
Robert Fletcher Rogers’ Letter to Joyce, July
5, 1S98 . 344
Easton’s Letter to Rogers . 345
Miller-Pierman Patent No. 720,905 . 382
Miller-Pierinun Patent No. 72G,9GG . 382
Brannt — Manufacture of Soap & Candles—
1888 . ...400
Carpenter— Soap & Candles— 1885 . 400
Ott— Soap & Candles, 1807 . 400
Edison British Patent No. 1044, of April 24,
1878 . 400 .
Edison Patent No. 200,521, Feb. 8, 1878 . 400
Bell & Tainter Patent No. 341,214, May 4, 1880 400
Tainter Patent No. 341,287, May 4, 1880 . 400
' Tainter Patent No. 341,288, May 4, 1880 . 400
. . &
Introduced
Edison Patent No. 3S2,419, May S, 1888 . 4GG
Edison Patent No. 3S2,462, May 8, 1SSS . 4G6
Herrington Patent No. 399, 2G4, March 12, 18S9 4G6
Herrington Patent No. 399,205, March 12, 1889 4GG
Edison Patent No. 430,271, .Tune 17, 1S90 . 4GG
Douglass Patent No. 475,490, May 24, 1S92. . . 4GG
Betthii Patent No. 4SS,3S1, Dec. 20, 1S92 . 4GG
Edison Patent No. 484, 5S2, Oct. 18, 1892 . 4GG
Edison Patent No. 4S4,5S4, Oct. 18, 1S92 . 4GG
Ainet Patent No. 539,212, May 14, 1S95 . 4GG
Aniet Patent No. 545,439, Sept. 3, 1895 . 4GG
Macdonald Patent No. 559,800, May 12, 1S9G. . 4GG
Aylswortli Patent No. 782,375, Feb. 14, 1905. . 4GG
Record made from Ordinary Klank Composi¬
tion by Commercial Joyce Process . 503
Record made after oiling the mold and core. . . 509
Third Joyce Record . 509
Early Joyce Record . ■ .
Cameron Deposition in Connecticut suit on
Edison Patent No. 713,209 . 527
Berliner Patent of Nov. S, 1SS7, No. 372,780. . . 528
Edison Patent of May 8, 1888, No. 382,417 _ 52S
Edison Patent of April 2, 1S89, No. 400, G19. . . 528
Heysinger Patent of Sept. 29, 1891, No. 460,338 52
Macdonald Patent of July 5, 1S9S, No. GOG, 725 . 528
Tainter Patent of March 2G, 1901, No. 670,442 . 528
British Patent of Berliner, 1887, No. 15,232. . . 528
Certified copy of Defendant’s Affidavits in its
suit against Walcutt & Leeds . 529
Photograph of Joyce Original Mold, Core and
Base . 529
Photograph of Commercial Joyce Apparatus,
Unassembled . 529
Photograph of Commercial Joyce Apparatus
Assembled . 529
Photograph of Weber’s Reproduction of De¬
fendant’s Reaming Tool . 529
Photograph of Weber’s Reproduction of De¬
fendant’s Mold and Core Unassembled _ 530
Photograph of Weber’s Reproduction of De¬
fendant’s Mold and Core Assembled . 530
LIST OF DEFENDANT’S EXHIBITS.
Introduced
AT PAGE
“Defendant’s Exhibit, Certified Copy File
Wrapper and Contents of Joyce Patent in
Suit” . 282
“Defendant’s Exhibit, Photograph 1895 Mold”. 213
“Defendant’s Exhibit, Photograph 1899 Mold,
No. 1 and No. 2” . 213
“Defendant’s Exhibit, British Patent to Field
& Hnmfrey, of 1856” . 282
“Defendant’s Exhibit, Young’s British Patent
of 1894” . 282
“Defendant’s Exhibit, Cowles Patent, No.
80,059” . 282
“Defendant’s Exhibit, . Brunner Patent, No.
95,645” . . . . 282
“Defendant’s Exhibit, Bingham Patent, No. •
182,547” . 282
“Defendant’s Exhibit, Wilder Patent, No.
185,054” . 282
“Defendant’s Exhibit, Appelt Patent, No.
303,970” . 282
“Defendant’s Exhibit, Schuberth Patent, No.
359,037” . 282
“Defendant’s Exhibit, Edison Patent, No.
393,462” . 282
“Defendant’s Exhibit, Edison Patent, No.
393,403” . 282
“Defendant’s Exhibit, Edison Patent, No.
414,761” . 282
“Defendant’s Exhibit, Bingham Patent, No.
419,914” . 282
Introduced
“Defendant’s Exhibit, Lioret Patent, No.
528,273” . 282
“Defendant’s Exhibit, Fournier Patent, No.
545, 35G” . 282
“Defendant’s Exhibit, Edison Patent, No.
GG7,GG2” . 282
“Defendant’s Exhibit, Edison Pntent, No.
713,209” . 283
“Defendant’s Exhibit, Scientific American
Cyclopedia of 1893” . 282
“Defendant’s Exhibit, Grove’s & Thorp of
1895” . 282
“Defendant’s Exhibit, Soaps & Candles of
189G” . 282
“Defendant’s Exhibit, Depositions of Norton,
Macdonald, Stevenson and Osborne” . 213
“Defendant’s Exhibit, Deposition of Thomas A.
Edison” . 214
“Defendant’s Exhibit, Transcript in Connecti¬
cut Suit on Edison Pressing Process.” (2
Vols.) marked for identification . 283
“Defendant’s Exhibit, Transcript in Connecti¬
cut Suit on Edison Casting Process.” (2
Vols.) marked for identification . 283
It is stipulated and agreed by and between
counsel for the respective parties ns follows:
1st. That the three eases entitled above
shall be consolidated as far as concerns the
taking of proofs.
2nd. That either party may introduce any
deposition or depositions, or any exhibit or ex¬
hibits in the suits which were brought
in the United States Circuit Court for the Dis¬
trict of Connecticut by the National Phono¬
graph Company against the American Grnplio-
phone Co. iiased respectively on Edison molded
record jjatents Nos. GG7,GC2 and 713,209, sub¬
ject to any objections Hint may be oll’ered as to
their materiality, etc.
3rd. It is stipulated and agreed that print¬
ed' official copies of U. S. patents and British
patents may he introduced in evidence with
tlie same force and effect ns if duly certified,
and that the date of filing printed on copies
of tlie U. S. patents shall be taken to be the cor--
rect filing date, subject to proper correction
of inaccuracies, if any.
Pursuant to the foregoing stipulation, coun¬
sel for defendant offers in evidence as part of
defendant’s proofs herein, depositions of E. E.
Norton, T. H. Macdonald, A. A. Stevenson,
E. H. Osborne, taken in the suits entitled above
on January 13 and 14, 1903. Also Defendant’s
Exhibit, Photograph 1895 Mold, Defendant’s
Exhibit, Photograph 1899 Mold, No. 1 and
No. 2.
Counsel for defendant states that tlie molds
whereof these exhibits are photographs, are
now in evidence in a suit between William
Herbert Smith and tlie American Graplio-
phonc Co., pending in tlie Supreme Court of
the District of Columbia, and defendant’s
counsel wishes to reserve the right to introduce
tlie same in this case if available at any time
before tlie hearing.
Defendant’s counsel also offers in evidence,
ns an exhibit for defendant herein, the deposi-
214
Thomas If. MacDonald.
tion of l'homus A. Edison, Esq., taken in the
above-entitled suits at West Orange, New Jer¬
sey, Oct. 9, 1903.
It is agreed that counsel for complninnnt
shall have the right after an investigation, to
enter objections if so desired, to the foregoing
portions of the record of the Connecticut cases.
And thereupon THOMAS H. MACDONALD, u
10 witness produced on behalf of defendant, being first
duly sworn, deposes and says ns follows:
Q. 1. Please state your name, age, residence and
occupation?
A. Thomas H. Macdonald; nge, forty-eight;
residence, Brigdeport, Conn. ; occupation, Manager
of tlie Factory of the American Grnpliophonc Co.
Q. 2. Are you the same Thomas H. Macdonald
who invented tile molded record process patented
in patent No. (1S2,991? ,
20 A' 1 i,m‘
Q. 3. And the same Thomas H. Macdonald who
gave a deposition in the molded record suits on the
Edison patents?
A. I am.
Q. 4. You have already given a deposition for the
complainant in the above-entitled suit based on the
Joyce patent, for the purpose of identifying the
process in use at defendant’s factory during the
period covered by the complaint herein. I under¬
go stand that substantially the same process has been
used by the defendant throughout the period cov¬
ered by these cases, to wit, from Oct. 1, 1901, down
to the present time. Is that correct?
A. That is correct.
Q. 5. What are the salient or essential steps
which are practiced in mnking sound-records by the
defendant’s process (hereafter to be understood as
the process in use at defendant’s factory during the
period above specified) ?
40 A. The first step is to
fill the mold with the
Thomas- If. MacDonald.
liquid or molten wax. The mold and the wax are
then raised to a temperature substantially above
the melting point of the wax. It is allowed to
• Ml t i t for a definite period of
time until all ebullition or bubbling has ceased and
the wax is thoroughly limpid. It is then removed
and the mold is immersed in cold water. As the
second step, chilling the mold (and consequently
tlie wax in contact with it) from the outside. The
next step is to remove the core, and after this the
surplus material in tlie center of the wax mold is
removed by a scraper, and tlie mold is then chilled
down to normal temperature by being placed in an
air blast. The molded record is removed, the ends
cut off, and when entirely cold, usually the next
day, it is placed in a machine which holds it on the
outside on eacli end. It is then reamed the size to
fit tlie mandrel of tlie talking-machine, and is then
ready for tlie market.
Q. 0. In tlie molding operation, as you have de¬
scribed it, have or have not tlie three steps of (1)
superheating the melted material while in the
mold, (2) maintaining tlie superheated tempera¬
ture, (3) suddenly and symmetrically chilling from
tlie outside, been always practiced in the manufac¬
ture of molded records by the American Graplio-
phouc Co.?
A. They have.
Q. 7. How high above the melting point of tlie
wax-like material is it heated?
A. From 120 to 150° Fahrenheit.
Q. 8. How long on an average is this superheated
temperature maintained?
A. About five minutes for each mold.
Q. 9. Is it possible, according to your experience,
to obtain commercial molded records by your pro¬
cess without employing these three steps enumer¬
ated above?
Q. 10. How much attention have j'ou given to
practical experimentation with reference to the
production of molded records?
A. I have devised the various processes used by
tlie American Graphophonc Co. and have directly
supervised their operation in the making of many •
millions of records during the last seven years. I
have carried on continuous experiments for a space
of nine years and have tried every process I could
think of. 1 have been engaged directly hi experi¬
menting on- Hits work almost daily during that
time.
Q. 11. Who has devised the machines and pro¬
cesses employed liy the American Graphophonc Co.
in the manufacture of talking machines and sound-
records during the past fifteen years?
A. I have.
Q. 13. Do yon understand the process described
and claimed in that patent?
A. I do.
Q. 11. Does the American Graphophonc Co. use
the process described and claimed in that patent, or
has it ever done so?
A. They do not use it and they have never done
Q. 15. Yon have stated that it is essential for the
production of a sound-record by your process that
the temperature of the wax should be raised to
about 150° or more above its melting point; liow is
it with reference to the temperature of the wax in
the Stiller & Aylsworth process?
A. It is necessary in this process, that is, the
Miller & Aylsworth process, that the temperature
of the wax should be maintained at a point barely
Thomas Jl. MacDonald.
217
above tiie melting point— just slightly more than
the melting point.
Q. 1(>. With reference to the temperature of the
mold, what is necessary in the Stiller & Aylsworth
process, and compare it witli your process in that
respect?
A. In tlie Stiller & Aylsworth process, it is
necessary that the temperature of the mold should
always be less than the melting point of the mater¬
ial. It must never he equal to or above it at any
time. This is made necessary from the fact that
the process utilizes this cold mold for chilling the
material and setting it the instant it touches the
surface of the mold. In the process which I have
devised and used in the American Graphophone
Co., the mold is heated to a point approximately
150° above the melting point of the wax. The mold
is allowed to remain in this state, also tlie wax, for
a period of about live minutes, this for the purpose
of allowing the wax to become limpid and all bub¬
bles to rise.
Q. 17. In the Miller & Aylsworth process, what
would happen if the mold were left in the vat until
lientcd above the temperature of the melted wax be¬
fore it was withdrawn?
A. They would not obtain a record if the mold
were allowed to come to the temperature of the
wax, for the wax will not congeal on its surface,
and when lifted out the wax would run back to the
vessel. There would be no record.
Q. 18. What is necessary in carrying out the Mil¬
ler & Aylsworth process with reference to the dura¬
tion of the time the mold is allowed to remain in the
melted material, and compare with your process in
that respect?
A. In tlie Miller & Aylsworth process- the mold
must remain hut a short time in the material. If it
were allowed to remain a substantial time the mold
Thomas II. MacDonald.
2rs
would become tlie same temperature ns the melted
material. There would, of course, he no chilling or
coagulation of- the material upon the surface of the
mold, and so there would he no cast or record. It
is therefore necessary to remove the mold before
it can be healed up to the melting-point tempera¬
ture of the wax. in my process, used hy the Amer¬
ican Graphophone Co., the mold is left in the ma¬
terial until (lie entire mold a'nd its tray which holds
it, is raised to the temperature of the superheated
wax. i t is then removed, the mold acting as a cup
for holding the melted wax is placed in water which
chills it, and thus produces the molded record.
Q. 1°- In (lie Miller & Aylsworth process is it es¬
sential that the record forms,— that is, that the ma¬
terial solidifies while the mold is in the vat?
A. It is, in their process; the sound-record is ac¬
tually formed and completed while the mold is im¬
mersed or in the liquid . wax.
Q. 20. In your process, is it possible to do this
even if you wanted to?
A. It is not possible to do it even if I wanted
to. The molded record in my case must be formed
after the mold is removed from the melted material.
It is actually made during the process of solidifying
in the cold water.
Q. 21. In the Miller & Aylsworth process is it
m ccss, in to insert the mold in the melted wax in a
particular way, and if so, in what way; and com¬
pare with your process in that respect?
A • In the M iller & Aylsworth process it is neces¬
sary to immerse the mold in the molten wax in such
a manner that the wax will How up and along the
bore of the matrix smoothly and uniformly. If this
is not done, rough spots and blasts would appear
upon the surfneu of the record, as the material
chills practically the instant it touches the surface
of their cold mold. In my process, used by the
Thomas II. MacDonald.
219
Graphophone Co., the material is thrown in the
mold in any convenient way. In actual practice it
is filled by dropping the mold six to eight inches
helow the surface of the wax and allowing the ma¬
terial to flow in over the top as rapidly as it can.
This is possible from the fact that the material does
not congeal when it strikes the sides of the mold,
lint the mold being raised in temperature by the
superheated material, the liquid wax is brought in 1°
contact with every part of the surface to be chilled
afterwards in the cold water bath.
Q. 22. In practicing the Miller & Aylsworth pro¬
cess, is it necessary to protect any part of the sur¬
face of the mold; and if so, please compare with
your process in that respect?
A. In the Miller & Aylsworth process it is neces¬
sary to protect the outside of the mold and to keep
it away from the melted wax, otherwise the wax on
both sides of the mold would heat it to such a
point that the material would not congeal on the
bore, the material being allowed to touch the inside
of the mold only. In my process just the reverse is
true. We desire the hot liquid wax to be brought
against the outside of the mold for the purpose of
raising the temperature of the mold itself well
above the melting point of the wax.
Q. 23. In Claims 3, 4 and 5 of the Miller & Ayls¬
worth patent, which are the Claims involved in this
suit, reference is made to immersing a mold in
molten wax-like congulativc material, whereby the
nmterinl will accumulate on the bore of the mold.
What method of immersing the mold in wax is de¬
scribed in this specification whereby the specified
result is accomplished?
A. I take it that this means that the mold is
lowered slowly into the wax-like material, allow¬
ing it to flow uniformly and evenly along the bore
of the mold, congealing as it meets the surface, be- 40
220
Thomas II. MacDonald.
ing then withdrawn before the mold has time to ac¬
quire the temperature of the wax. But this expres¬
sion of immersing the mold, as quoted in the patent,
does not seem to me to describe the process, at least
as I understand immersing, for the description in¬
dicates that only a part of the mold is actually
touched by the liquid, and I think it would hardly
be correct to state that where only the inside is
touched by the liquid, that the body was immersed.
Q. 24. In defendant’s process is the mold lowered
or dipped into the melted material in the way spe¬
cified in the Miller & Aylsworth patent as just de¬
scribed by you?
A. It is not. In the defendant’s process the
mold is actually immersed in the liquid wax, that
is, it is placed below the surface of the wax, so that
it comes in contact with every part of the mold in¬
side and out, and is there allowed to remain. In
tlie Miller & Aylsworth patent, according to the
process as therein described, the outside is so pro¬
tected that the wax only comes in contact with the
inner bore of the mold.
Q. 25. In practicing the Miller & Aylsworth pro¬
cess, what is the importance of lowering the mold
gently so ns not to produce agitation of the liquid?
A. In this process the wax congeals upon the
surface of the bore the instant it touches it. To pro¬
duce a perfect cast, therefore, it is necessary to in¬
troduce it gently, so that this molten wax will flow
uniformly and smoothly over the surface of the
matrix. That is, the bore of the matrix. If it were
introduced while the liquid were in agitation, or
dropped violently or rapidly into the wax, this re¬
sult would not be obtained.
Q. 2G. In defendant’s process is the mold intro¬
duced gently so as to avoid agitation of the liquid
material?
A. It is not, it is dropped quickly below the sur¬
Thomus II. MacDonald.
face, tlie material allowed to flow in ns it may.
Q. 27. In defendant’s process what means are
employed for introducing tlie liquid material into
the molds?
A. A tray of molds, usually containing eight, is
suspended above a kettle of molten wax, the tray is
supported by a chain passing over a pulley to which
a counterweight is attached. Tlie tray of molds,
which is placed on the apparatus, is lowered by the
workmen quickly below tlie surface of the wax. It
is allowed to remain there for a period of five min¬
utes, which is sufllcient to heat tlie mold to substan¬
tially the temperature of the wax. It is then lifted
out and set in a cold water bath to be chilled.
Q. 28. IIow does your method of getting the ma¬
terial into tlie molds differ from filling a bucket in
a well, for instance?
A. It does not differ at all, the process is al¬
most identical.
Q. 29. Would it be possible with tlie means you
employ in defendant’s process, to practice tlie Mil¬
ler & Aylsworth process?
A. It would not.
Q. 30. Referring to the Joyce patent, No. 831, GG8
in suit, I read, beginning line 100, page 1, of the
specification, ns follows: “Tlie mold, core and base
are slightly oiled, and then heated preferably to
near tlie temperature of tlie melted wax.” What do
you understand by that?.
A. I understand that lie heats his mold by some
outside source, possibly a direct flame, before intro¬
ducing the wax into the mold.
Q. 31. What do you understand by the words “to
near tlie temperature of the melted wax”?
A. I understand that to mean slightly below the
temperature, not quite so hot.
Q. 32. Have you read tlie specification of this
patent, and do you understand the process as de¬
scribed?
Thomas II. MacDonald.
have road it, and understand tlic process.
In carrying out tlic defendant’s process,
not, the mold heated to near the tempera¬
ture of the melted wax before the wax is introduced
into it, or heated at nil prior to that time?
.A. It is not heated at all.
Q. 31. Is there in that specification, any means
described for getting rid of air hubbies and other
things that would produce defective sound-records?
A. There is not.
Q. 35. Would or would not tlic description con¬
tained in this specification besufllcient to enable one
skilled in the art to make commercial sound-records
without additional information or without further
invention?
A. There is not sufficient information here, and
it would not he possible to make commercial sound-
records from this description without further or ad¬
ditional invention.
Adjourned to Monday, January G, 190S, at 11
o’clock a. m.
New York, January G, 1908.
Met pursuant to adjournment.
Present :
Prank L. Dyer, Esq., for complainant.
Philip Mauiio, Esq., for defendant.
By Mr. MAUKO:
Q. 30. Referring again to the Joyce patent, do
you know whether it was or was not novel at the
date of the Joyce application to pre-heat a mold in
which wax-like material was molded?
A. It was not new, hut was a common practice
to do this.
A. 1
is, or is
Thomas II. MacDonald. 223
Q. 37. Is there, or is there not, any advantage
in heating a mold in which sound-records are to be
molded to about the temperature of the melted wax
as described in' the Joyce patent?
A. There is not. •
Q. 38. You have stated that it would not be pos¬
sible with the means employed in your process to
practice the Miller & Aylsworth process. Please
state whether it would be possible with the means 10
described in the Miller & Aylsworth pntent to prac¬
tice your process?
A. It would not be possible.
Q. 39. In your deposition given in the Connecti¬
cut suits which lias been introduced into tliis suit,
Mr. Frank L. Dyer, who is now present, asked you
this question : .(x-Q. 32) “In view of the fact that
your 1895 mold shows a steam jacket for heating the
mold, why did you adopt the clumsy expedient in
the 1899 mold of heating the mold by superheated 20
wax”? To which you replied : “A. Merely to obtain
the effect of a higher temperature than could be ob¬
tained from steam, and also to obtain varying tem¬
peratures; and I do not regard the method as clum¬
sy.” Please state in what respects, if any, the pro¬
cess now practiced by defendant and involved in
this case differs from what Mr. Dyer was pleased
to call the “clumsy expedient” used by you in 1899?
A. The process used by me in 1899 and referred
to in that question is the same as that used by the 80
defendant at the present time, and has been so used
by them for the past seven years.
Cross-examination by Mr. DYER:
x-Q. 40. Referring to your answer to Q. 14, in
which you state that the American Graplioplione
Co. has never used the process described and
claimed in the Miller & Aylsworth pntent No. 6S3,-
614, do I understand that you appear as a patent
expert in this case, or that you are qualified to ex- 40
— . . . — _ .... _ -V. , - k> A i
224 Thomas II. MacDonald.
press the usual opinion that patent experts are
railed upon to express in patent suits?
A. I am not certain ns to the qualifications of a
patent expert. My answer, as given there, was
based upon my knowledge of the business, my famil¬
iarity with the making of molded records. If that
exact knowledge constitutes expert knowledge, then
it is the same.
x-Q. 41. I assume that all you did was to read the
Miller & Aylsworth patent, and having found that
it described a certain process which differed from
the process you used, you concluded from that fact
that the American Graphophonc Co. had not nsed
any process that was described and claimed in that
patent?
A. I have not only read the patent carefully,
hut I have tried to carry on experiments under this
patent as I usually do under every patent that is
issued that seems at all interesting, and from the
knowledge I gained from the experiments and the
reading of the patent I gave the answer which I did.
x-Q. 42. You have not, as I understand it, ever
testified as a patent expert, that is, as a person qual¬
ified to explain the meaning of patent specifications
and claims for the benefit of the Court?
A. Not to the best of my knowledge and belief.
By Mr. DYER : In view of previous answers
tlie answer to Q. 14 is objected to as incom¬
petent.
x-Q. 43. You state that the process now used by
tlie American Graphophone Co. in substantial re¬
spects has been continuously carried out since prior
to Oct. 1001. It is a fact, is it not, that up to some
time in 1003 the process used by the Graphophone
Co. involved the employment of steam-heated molds
substantially as suggested in your patent No. 682,-
001, referred to in answer to Q. 2?
Thomas II. MacDonald. 225
A. Both processes were used. I nm not certain,
at this time, when the steam molds were finally dis¬
continued, though the method of making molded’
records by the process of heating the mold with the
wax was used more or less constantly from the very
beginning of iny work.
x-Q: 44. When you refer to the fact that the
molds were heated by the use of hot wax in your
early work, you have reference, have you not, to the
experimental apparatus that was introduced in the
Connecticut suits on the Edison pntents, where hot
or super-heated wax was poured into a jacket sur¬
rounding the mold, in somewhat the same way as
the steam was introduced in the molds as used by
you at that time?
A. I used the 1899 mold in this manner. Ex¬
periments were made with this mold, however, of
setting it in the hot wax, and of dipping the mold
in wax the same as we are doing it now, etc. In fact
the only reason for going from the stenm molds was
to save the material of which the records were
made. Of course when the tray is lifted out of the
wax it is covered with the record material, and
when the tray is set in water this inntcrial is lost,
and I considered that this would be a substantial
item in large work, and it was for that reason I de¬
vised the scheme of superheating the mold through
the use of steam. This, however, was found after
use to lie not so good in its ultimate results, and
we went back to the original scheme which has
been used ever since.
x-Q. 45. As I understand the history, therefore,
of your work, you started out by using a mold hav¬
ing a jacket into which you introduced the super¬
heated wax, and having found that with such an ap¬
paratus there was a substantial loss.of the wax used
for the purpose of superheating, you adopted the
use of steam for superheating purposes, and that
later on you adopted the present expedient of em¬
ploying a plurality of relatively thin molds on a
tray and immersing below a large body of wax
maintained at a high temperature. Is that correct?
A. Except in the reference to the thin molds.
The molds subsequently used were no thinner than
those used originally.
x-Q. 40. These molds are about % of an inch
10 thick, are they not?
A. Not quite ns thick as that, I should judge;
I think less than y8, not over 3-32, 1 should think.
x-Q. 47. In your answer to Q. 5 describing the
process now carried on by defendant, you state that
after the core is removed “the surplus material in
the center of the wax mold is removed by a scraper.”
It is a fact, is it not, that in removing this surplus
material the scraper also forms a series of con¬
centric rings on the inside of the record?
20 A. It does.
x-Q. 48. And the subsequent reaming you refer
to in the same answer, consists, as I understand it,
of scraping off the inside of these concentric rings
so as to make the record fit the mandrel?
A. That is right.
x-Q. 49. This expedient of forming the records
with concentric rings was adopted in 1903, was it
By Mr. MAURO : Objected to as immaterial.
A. I cannot recall the date of that adoption. It
was somewhere about that time.
x-Q. 50. And before that time, the records made
by the American Gruphoplionc Co. had been formed
with spiral rings on the inside?
Thomas It. MacDonald.
227
x-Q. 51. You state in answer to Q. 7, that the
wax-like material used by you is heated from 120°
to 150° Fahrenheit above its melting point. Can
you tell me what the actual temperature is that you
employed?
A. About 400° Fahrenheit. The melting point
of this material is rather vague, ns it goes from a
solid to a semi-plastic condition, gradually ap¬
proaching a liquid condition through a molasses 10
like consistency.
x-Q. 52. I infer from the fact that you used the
material at a temperature of about 400°, that its
melting point exists somewhere between 250° and
280° Fahrenheit?
A. That has been my assumption.
x-Q. 53. Would it be possible, by your process,
to obtain satisfactory duplicate records if the tem¬
perature of the material was somewhat lower than
that you have mentioned? 20
By Mr. MAURO : Question objected to ns
indefinite.
A. How much lower?
x-Q. 54. I would like to know generally, if you
can tell me, wliat you regard as the minimum super¬
heating that it is necessary to impart to the wax
to produce satisfactory records by the specific pro¬
cess that you use?
A. After a considerable number of experiments
I established the temperature at 400°, so I consider
that the minimum, temperature practical to use in
this process. As to the question of the possibility
of obtaining records at a lower temperature, of
course it is possible to do so. I presume that an
experimenter would succeed in getting records. Our
228
Thomas II. MacDonald.
stnntinlly tlie same material nt nil times, except
that since some time in 1003 you have employed
certain proportions of Cnrnnulm wax ?
A. We ’have.
x-Q. 50. Did tlie employment of this Cnrnauba
wax necessitate changing the process at all?
A. It did not.
x-Q. 57. You regard tlie process that you used
in 1002 with the steam-heated molds as entirely
practical, do you not?
A. It is practical.
x-Q. 58. Do you recall the fact that with that
process you used a temperature of only 350°?
A. About that.
x-Q. 50. So that it is possible to obtain com¬
mercial results by using the wax as low as 350°,
as I understand it?
A. It is possible.
x-Q. (10. Your process would he the same, would
it not, whether the molds were introduced rapidly
or slowly into the wax, except, of course, for the
element of time?
A. The result would be the same.
x-Q. (11. Do you find any statement iii the Joyce
patent in suit that the mold is heated by a direct
(lame?
A. I do not recollect that.
x-Q. 02. In the early part of your examination
tli is morning you refer to the fact that the super¬
heating of molds was not novel nt the date of the
application for the Joyce patent. Was this true of
molds used for mnking phonograph records?
A. It was true of molds for moldiug wax cyl¬
inders.
x-Q. 03. That is, wax blanks?
A. Yes.
x-Q. 04. I presume that you have in mind the ex¬
perimental work done with the 1895 mold, making
Thomas IT. McDonald.
229
blanks, that was referred .to in the Connecticut
A. I have reference to that, nnd also to pro¬
cesses common in the arts of moldiug the wax cyl¬
inders, such as candles.
x-Q. 05. 31 r. jMauro has put on tlie record n ques¬
tion which was asked you in the Connecticut suits,
where, in referring to your 1899 mold in which the
superheated wax was poured into a jacket, I re¬
ferred to it as a “clumsy expedient.” Of course,
there is a very marked commercial difference, is
there not, between such an apparatus and one such
as you now use where a series of eight molds are
directly immersed in the superheated wax?
A. There is a difference, yes.
x-Q. 00. One is a highly commercial process, and
the other would he of doubtful commercial utility,
would it not?
A. No, I would not consider it of doubtful com¬
mercial utility; it can be used very .well.
Deposition Closed.
Signature of witness and certificate of magis-
230
Philip Alatiro.
STIPULATION.
It is stipulated by and between counsel for the
respective parties hereto, subject to correction in
case of error and subject to the objections hereafter
made, that if PHILIP MAUltO were examined as
a witness for the defendant, lie would testify that
he has been chief patent counsel for the said de¬
fendant for the past fifteen years and over, and as
10 such is thoroughly familiar with all its patent liti¬
gation ; and that from such personal knowledge he
makes the following statements :
I.
Beginning at least as early as during the year
1899, the defendant American Graphophone Com¬
pany has carried out substantially the same process
it is now using in molding cylindrical sound-rec¬
ords, as testified to herein by Thomas H. Macdonald
20 —beginning at a period earlier than the date of
issue of any of the patents upon which these com¬
plainants have sued this defendant (or its selling-
agent) on account of its said molded sound-records.
II.
The complainants herein have brought against
the defendant herein (or its selling-agent), on ac¬
count of defendant’s said molded sound-records,
eight patent suits, as follows :
30 1. National Phonograph Co. v. American
Graplioplione Co., on Edison patent No. G67,GG2,
granted Feb. 5, 1901, (application filed May 8,
1900).
Dec. 27, 1901, bill filed in District of Con-
necticut.
Feb. 3, 190G, bill finally dismissed.
2. National Phonograph Co. v. American
40 Graplioplione Co., on Edison patent No. 713,209,
Philip Mauro. 231
granted Nov. 11, 1902, (application filed March 5,
1898).
Jan. 5, 1903, bill filed in District of Con¬
necticut
Feb. 3, 190G, bill finally dismissed.
3. National Phonograph Co. v. American
Graplioplione Co., on Miller & Aylswortli patent
No. G83,G15, granted Oct 1, 1901, (application filed
July 31, 1900) (one of the patents here in suit).
Oct. 24, 1903, bill filed in District of Con¬
necticut.
June 24, 1905, bill dismissed by consent.
4. National Phonograph Co. v. American
Graplioplione Co., on Aylswortli & Miller patent
■Philip Macro.
23? .Philip Mauro.
June 12, 190S, bill dismissed by consent.
S. New Jersey Patent Co. v. American Grnpho-
phone Co., on Joyce patent No. 831,008, granted
Sept. 25, l!)0(i, (application filed Oct. 13, 1S97).
Dec. 20, 1900, bill filed in Southern District
of West Virginia (the third .of the present
Defendant had been manufacturing its molded
sound-records continuously, by the same process
it is now using, for several years before any of these
patents issued.
III.
The file-wrappers of the Edison patent No. 713,-
209 (No. 2 above) and of the Joyce patent here in
suit (No. S above) show the following facts:
That on March S, 1902, the Patent Ollice Exam-
20 iner suggested to Thomas A. Edison, in his then
pending application, Serial No. 072,050, filed
March 5, 1S9S, (which eventuated in the Edison
patent No. 713,209 — No. 2 above) certain claims
then found in the said Joyce application, Serial No.
055,027, filed Oct. 13, 1S97 (which eventuated in
the said Joyce patent No. 831, GG8, here in suit —
No. 8 above) ; of which the second" suggested claim,
found on printed page 595 of the Transcript on
Appeal in the said Connecticut suit No. 2, is iden-
30 tical word for word with the then Joyce Claim 5,—
other claims suggested to Edison in the same oillce
letter being for the same substantintivc invention,
but differing in phraseology. The said Joyce Claim
5, found on page 140 of the said Transcript and
thus suggested to Edison, is as follows:
“5. The method of producing hollow cylin¬
drical phonograms which consists in obtaining
a. mold having a reverse phonogram record on
,40 the inner wall of a cylindrical opening, , form¬
ing a hollow cylindrical plastic phonogram
within said mold, releasing the phonogram
from the mold by a difference of temperature
between the mold and phonogram sufficient
to entirely clear the surfaces, and removing
the phonogram from the mold by direct longi-
tundiual movement.”
That on March 10, 1902, (as appears on page
590 of said Transcript) Edison, by amendment, 10
incorporated into Ins said application (No. G72,-
050) the Claims thus suggested to him from the
Joyce application, the Edison Claim 2 then pre¬
sented being identical with Joyce’s Claim 5 above
quoted.
That thereafter, by subsequent amendment to his
said application, on April 24, 1902, (as appears on
page 599 cl seg. of tiie said Transcript), Edison
presented a substitute Specification and Claims, — 20
his above-named Claim 2 (identical with Joyce’s
said Claim 5) being re-framed as Claim . 3, and a
new Claim 2 being inserted for the same subject-
matter; and (on page Gil of said printed Trans¬
cript) in regard to said amendment Mr. Edison’s
attorneys said':
“Noth: The claims above presented are the
same as those which have been erased, except
that a new second claim has been added, ex¬
pressing tiie radial contraction of the dupli- 30
cate from the matrix in somewhat broader
terms than tiie former second (present third)
claim; the latter claim lias been also changed
iu language so as to more clearly express the
invention. * * *”
That thereafter, on June 24, 1902, an Interfer¬
ence No. 21,S93, was declared between tiie said
Joyce pending application (that eventuated into
■the Joyce patent here in suit — No. S above) and 40
234
Philip Maun
the said Edison pending application (that eventu¬
ated into the Edison patent No. 713,209, — No. 2
above), 'l’lie issue of the Interference was whether
Joyce or Edison was the true and first inventor of
the subject-matter, which as formulated included
two “Counts,” corresponding to Edison’s Claims
2 and 3 aforesaid, and the then Joyce Claims 9 and
5 respectively.
That thereafter, on or about
the said Joyce filed, in favor of the said Edison,
his concession of priority as to the said issue thus
involved in the Interference; that on or about
Oct. , 1902, the said Joyce, by an instrument in
writing duly executed and delivered, assigned his
said invention and application to the National
Phonograph Co. (one of the complainants herein) ;
that on Oct. 10, 1902, the said instrument of as-
20 signment was forwarded, by Messrs. Dyer, Ed¬
monds & Dyer (Edison’s attorneys), to the Patent
Office for recording; and the said instrument was
duly recorded in the United States Patent Office
on Oct. 11, 1902. That judgment of priority in
favor of the said Edison and against the said Joyce
application having been rendered by the Patent
Office, thereupon, on Oct. 10, 1902, the aforesaid
Claims 5 and 9 of the said Joyce application S. N.
055,027, were finally rejected; and on Oct. 27, 1902,
30 said Claims 5 and 9 of the said Joyce application
were canceled. That on Jan. 21, 1903, all the rest
of the Claims of the said Joyce application were
rejected on the Edison patent No. 713,209, which
had issued as the result of the said Edison applica¬
tion aforesaid; that in March, 1903, Prank L. Dyer,
Esq., (Mr. Edison’s attorney, and counsel for the
complainants herein) was appointed associate at¬
torney for the further prosecution of the said Joyce
application; in the meantime, and beginning on
40 April 30, 1902, the said National Phonograph Co.
Philip Mu uro. 235
had taken its prirna facie proofs in suit No. 1 above,
closing the same on May 7, 1902, and the defendant
had taken as its ausweriug proofs, beginning Oct.
21, 1902, the testimony of Miller, Aylsworth, Cam¬
eron, Norton, Macdonald, Stevenson, Brynes and
Osborne.
That on Dec. 22, 1905, and after all of defendant’s
proofs in both of the Connecticut suits aforesaid
(Nos. 1 and 2) had been taken and closed, Mr.
Dyer (as Joyce’s attorney) canceled nil the Claims
then remaining in the Joyce application, and pre¬
sented the Claims now appearing in the Joyce pat¬
ent in suit; that on Jan. 0, 1900, Claims 3, 4, 5 and 0
(being the same Claims 3, 4, 5 and G now appearing
in the Joyce patent) were rejected by the Patent
Office on the said Edison patent No. 713,209 (par¬
ticularly Claims 2 and 3 thereof) ; and that, in
response to this rejection, Mr. Dyer (as Joyce’s
attorney) presented the arguments referred to fly
defendant’s witness Massic in answer to Q. 9.
That the said Edison application S. N. G72.G50,
containing the Claims thus taken from the Joyce
application, was issued as patent No. 713,209, dated
Nov. 11, 1902; that the National Phonograph Com¬
pany sued this defendant on the last-named Edison
patent, being suit No. 2 above; and that the Claims
involved were the aforesaid Claims 2 and 3 thereof
that had been thus taken out of the' said Joyce
application.
IV.
That the suit No. 2 above referred to, brought
against this defendant in the District of Connecti¬
cut on the Edison patent No. 713,209, aforesaid
(together with suit No. 1 on Edison pntent No.
GG7,GG2), came on to be heard before his Honor
Judge PLATT in June, 1904; and that on or about
March 17, 1905, a written opinion was filed, the
Philip Minim.
same being reported in 135 F. IS. S09; and that
pursuant to saiil opinion Final Decrees were en¬
tered on March 30, 1903, dismissing the two bills
of complaint witli costs to defendant.
That thereafter the said National Phonograph
Company perfected its appeals from said final de¬
crees, lmt on or about Dec. fi, 1905, voluntarily
10 dismissed its said appeals; and in the meantime,
on or about .Tune 2-1, 1005, the said suits Nos. 3 and
4, on the Miller & Aylsworth and Aylsworth &
Miller patents respectively (here in suit), then
pending against the said American Graphophone
Company in the District of Connecticut, were like¬
wise voluntarily dismissed by the said National
Phonograph Company.
The paragraph numbered I. is objected to
for tlie reason that it is a mere conclusion and
M is incompetent, irrelevant and immaterial.
In the paragraph numbered II., suhhcndcs
1, 2, 3, -1 and 7 and the last 3 lines of said para¬
graph (following subhead S) are objected to
as irrelevant and immaterial.
The paragraphs numbered 3 and 4 are each
objected to as irrelevant and immaterial as
matter of argument and as not the best evi-
30 FRANK L. DYER,
Counsel for Complainants.
C. A. L. MASSIE,
Counsel for Defendant
Deposition taken by consent of _ counsel in the
absence of counsel for complainant subject to ob¬
jection and cross-examination by linn.
C. A. L. MASSIE, being duly sworn, deposes and
says as follows :
I am -forty years of age. I reside in Hacken¬
sack, New Jersey, and have an office in the City of
New York. I am an Attorney and Counsellor at
Law, making a specialty of patents and patent
causes, and I am a registered patent solicitor and
a member of the firm of Mauro, Cameron, Lewis &
Massic, of Washington, D. C., and New York, N. Y.
Q. 1. Please state what experience you have had
that qualifies you to testify regarding the three
suits above-entitled?
A. After academic and collegiate education, and
some years experience as a school teacher, early in
1904 1 became an Assistant Examiner in the United
States Patent Office. For nearly four years it was
my daily duty in the Patent Office to examine appli¬
cations for patent, involving the study of earlier
patents and publications, the consideration of the
Specifications, Drawings and Claims of the Patent
Office applications and of earlier patents. In Jan¬
uary, 189S, I became associated with Philip Mauro,
Esq., senior counsel for complainant herein, and
was placed in charge of our New York office. Dur¬
ing the past ten years I have paid more attention
to the talking-machine art and the patents relating
thereto than to any other art. I have prepared and
'prosecuted a great many applications for patent in
various arts, but particularly in the talking-ma¬
chine art. I have also acted as of counsel for the
American' Graphophone Company in nearly all the
238
0. A . fj. Massie.
t lms been involved during
patent suits in wldcl
the past ten years.
I believe myself familiar in a general way with
the patents that have been granted in this art, and
also in a general way I consider myself familiar
with tiie practical developments of this business
during the past ton years. I believe I nm acquaint¬
ed with most of the technical terms employed in this
art.
Q. 2. Have you read the Joyce patent No. 831, 068
and the Miller & Aylswortli Process patent No.
G83,G15, sued on in two of the above-entitled suits;
and, if so, do you understand the same?
A. I have read the two patents named and I be¬
lieve I understand them.
Q. 3. Have you read complainants’ prim a facie
proofs in each of the three suits, above-entitled, in¬
cluding the stipulations of defendant’s counsel
therein; and, if so, do you understand the process
therein set forth as the one practiced by defendant
in making molded cylinder records?
A. I have read the same, and I believe I under¬
stand the process therein set forth as defendant’s
process.
Q. 4. Please state briefly the gist of what you un¬
derstand is set forth by Claims 3, 4 and G of the
said Joyce patent and by Claims 3, 4 and 5 of the
said Miller & Aylswortli Process patent, and com¬
pare the same broadly with the process practiced bv
defendant?
A. Broadly stated, the process of each of the
two patents inquired of is the casting of a suitable
material into a suitable mold to produce an article
of a certain shape and having certain inherent
qualities. The shape of the article depends upon
the shape of the mold. The inherent qualities of
the article depend upon the inherent qualities of
the material employed for making the casting.
0. A. L. Mosaic. 239
And, also, broadly stated, the process in each case
consists in introducing the material in a molten
state into the mold. All this is true of every
ensting process, whether the object of the
process is to make sound-records or to make can¬
dles, or to make any other ensting, — namely, a suit¬
able mold is provided and the material (in a molten
condition) is introduced into the mold. Up to this
point the foregoing remarks are also true of what
is set forth in the prime facie proofs ns “defendant’s
process.” But there is nothing so far stated by me
that relates particularly to the talking-machine art.
There is nothing so far stated that is peculiar to the
making of sound-records. Indeed, the process above
set forth is not a phonographic or sound-record pro¬
cess; it is merely a casting process or molding pro¬
cess.
The same process, ns thus broadly stated, name¬
ly, the introduction of molten material into a suit¬
able mold, lias been employed for many years — I be¬
lieve since the early 90’s at- least— in making blank
cylinders for use upon talking-machines. That is,
a cylindrical mold having a smooth bore is em¬
ployed; and a suitable composition is melted and
introduced into the mold. After the material has
cooled and set, the casting is removed, just as nny
other ensting would be, and it will then have a
smooth cylindrical surface corresponding to the
smooth cylindrical bore in which it was cast.
In defendant’s process, in the process of the Joyce
patent, and in the process of the Miller & Aylsw,orth
patent, a cylindrical mold is employed, but its bore
(instead of being perfectly smooth) has minute ir¬
regularities, being the reverse of the record-groove
of an original sound-record. When the molten ma¬
terial has been cast into such a mold, and after be¬
coming set has been removed therefrom, — the cyl- ,
. .. -
m
L. fj. Mamie.
mdncnl casting obtained will present (instead of a
uniform surface) one Imving a helical record-
groove — the reverse of the surface of its mold — just
as any other easting would present the reverse of
the surface upon which it has been east.
Still speaking broadly, the gist of Claims 3, 4
and (i of the Joyce patent consists in introducing
10 the molten material into a hot mold, the mold being
heated “preferably to near the temperature of melt¬
ed wax” (line 103 of page 1 of Joyce patent).
Claims 3, 4 and 5 of the Miller & Aylswortli pat¬
ent require that the molten material miml he intro¬
duced into a cold mold, provision being carefully
made to keep the mold from becoming healed.
These two “processes,” then, are diametrically the
opposite each other. Joyce requires a hot mold,
2Q while M iller & Aylswortli require a cold mold ; and
it is inconceivable to me how any one could in the
same procedure he carrying out simultaneously
these two patented processes. As a matter of fact,
defendant’s process introduces the molten material
into a cold mold (instead of into a hot mold as re¬
quired by Joyce) ; and defendant’s process consists
emphatically in subsequently raising the tempera¬
ture of the. mold until it becomes heated far above
the temperature of melted wax, and in maintaining
30 this high temperature for a considerable length of
time, instead of introducing the wax into the cold
mold of Miller & Aylswortli and preventing the
mold from becoming heated.
In short, considering the process of the Joyce
. patent and of the Miller & Aylswortli patent in the
broadest possible light, it is evident that defendant’s
process is entirely different from each of' the two
patented processes.
Q.5. What do yon find to be the alleged novelty
40 in the process set out in Claims 3, 4 and C of the
Joyce patent, being the Claims here in suit?
A. On reading this Joyce patent it would ap¬
pear that the patentee when he presented liis. appli¬
cation to the Patent Office had no idea of the diffi¬
culties to bo encountered in the production of cast
or molded sound-records; and I think it quite prob¬
able that he was not at all familiar with the ma¬
terial or composition employed in making sound-
records, either cast or original. Certainly his spe¬
cification gives no intimation as to any difficulty or
difficulties to be encountered in making cast cylin¬
der records, or ns to any precautions to be taken in
avoiding or overcoming these difficulties. Joyce’s
Specification directs us to take a mold and do two
things to it before we introduce the molten mate¬
rial, and lie recommends that a third step be per¬
formed after the material lias been introduced. He
tells us first to oil the mold slightly; and then, sec¬
ond, to heat' the mold. What effect the heating of
the mold will' have upon the oil, or what effect the
heated oil will have upon the cast sound-record, is
problematical.
I will observe here that this step of oiling the
mold beforehand was especially emphasized in the
prosecution of the Joyce application in the Patent
Office, by reason of the fact that the reference to
the oil was inserted by interlineation after the Spe¬
cification was written out. This indicates that the
matter was brought particularly to the attention of
the applicant and his attorney, and the insertion
deliberately mode. i
His Specification says that the mold and its ad¬
jacent parts are slightly oiled “and then heated,
preferably,. to near the temperature of melted wax.”
(Bottom of second column. ) No reason or explana¬
tion 4s assigned dor. this, — unless it be found in the
statements that follow immediately J after, “This
heating expands mold H slightly,” eto.i: '.;
Considering not only what is stated in the pat¬
ent, but also wlmt is not stated in the patent, the
only reason that can be attributed to the patentee,
in directing us to heat the mold, following this by
the statement that heating expands the mold slight¬
ly, is that Mr. Joyce must have supposed that if his
mold be slightly expanded beyond its normal di¬
mensions before the material is introduced, then,
u upon calling, the mold will contract, and apply uni¬
form pressure, squeezing or compressing the con¬
tents forcibly so ns to make a perfect casting. Such
idea upon Mr. Joyce’s part would seem plausible
enough to one who was not practically familiar
with the art, and is a consistent explanation of
why he directs the heating of his mold.
I said that I came to this conclusion not only
from what is stated in the patent but from what the
2Q patent omits to state. By the last clause, I refer to
the fact that the patent gives no directions for heat¬
ing the material to a temperature substantially
above its melting-point, and there are no sugges¬
tions that this high temperature must be main¬
tained for a considerable time. The patent does
not even intimate that these two steps (superheat¬
ing and maintaining the superheat) would be de¬
sirable; and no provisions are recommended that
would produce either of these results. On the con-
30 trary> tlle teaching of the patent !b that the wax
must not be superheated.. I understand that in the
development of the molded sound-record in a prac-
tical manner, the presence of air bubbles, entrapped
between the matrix-surface and the molten mate¬
rial, caused a great deal of difficulty; and that this
obstacle has been removed by defendant, by super-
heating the wax and maintaining the high tempera¬
ture, by which the air bubbles are driven off. I
understand that complainant, in its practice of the
40 art of molding sound-records, uses molds that are
0. A. L. Massie. 243
open at the bottom, and introduces the material in
a gentle, quiet manner from the bottom upward, so
os thus to avoid air bubbles. Since Joyce says
nothing about any air bubbles or any similar defect,
and since he does not tell us to introduce the mate¬
rial from the bottom, or to superheat the material
and maintain the high temperature; and since he
does say that this heating “expands mold H slight¬
ly,” — the only rational and consistent explanation
is that Mr. Joyce intended to expand his mold first
so that upon cooling it would contract and squeeze
its contents. Otherwise, why should he feel called
on to mention the perfectly obvious fact that heat¬
ing a metal mold expands it slightly?
Prom what has been said, it follows that the
Joyce patent directs us to heat the mold before the
molten material is introduced. And this is bornd
out by the fact that the sentence immediately fol¬
lowing begins with the conjunction “then,” which
is a temporal conjunction, thus:
“The mold etc. are slightly oiled and then
(as a second step) heated * * * Then (as
a third step) melted wax is poured * » •
After the wax has been poured * * * it
will generally have the exact form of the mold
when cool."
“Then,” after the mold has been heated, the melt¬
ed wax is poured into it, and “after this wax has
been poured it will generally have the exact form
of” — what? Why, “of the mold when cool.” This,
to my mind, reinforces the proposition that Joyce’s
idea is: “I must first expand my mold by heating
it; so that I can then, subsequently, pour in my
wax; and then permit or cause the mold to con¬
tract (by cooling it) so ns to give my casting the
exact form of the mold when cool."
When I came to consider the Claims here in suit,-
numely, 'Claims 3, 4 andG, I find the first step re¬
cited ineaehis said toconsist.of casting tlic.inolten
material into “a hot * * * record-mold.” I agree
. with complainant’s expert, Mr. Holden, where he
says (x-Q. 0) timt this step of “casting” 'begins
with the introduction of the first of the 'molten ma¬
terial into the mold, and ends as soon as the last
portion of the molten material has been 'Introduced.
I also- agree with Mr. Holden where he says (x-Q.
9) that the kind of mold which tiiese Claims of the
Joyce patent direct us to fill with the molten mate¬
rial is a 7iot mold, and with his statement in the sec¬
ond .paragraph of his answer to Q. 4, that in the
Joyce process the mold is pre-heated.
l'o sum up : what I find set forth in the Claims 3,
4 and G of the Joyce patent as purporting to be
novel consists of pre-heating the mold before the
20 molten material is introduced into it. This I un¬
derstand to be the gist of the alleged invention set
forth by these three Claims.
If we ignore the explicit statements of these
Claims and of the Specification already referred to
and if we read into the Joyce patent, the informa¬
tion contained in other patents that were applied
for by other investigators, and disclosed to the
world by other patents subsequent to Joyce’s filing
30 date, then it might possibly be contended that the
gist of the three Joyce claims in suit consists of
using a hot mold, whether the same was heated
before or after filling it with the wax. But there
is no justification for this view. There is nothin"
m the Claims themselves to warrant it °
'Q. G. What have you to say as to the novelty of
employing a hot mold in casting cylinder records
or other cylindrical objects composed of a wax-like
material? And as to subsequent chilling?
40 A. I produce a book entitled “The Scientific
American Cyclopedia of Keceipts, Notes and Quer¬
ies. Edited by Albert A. Hopkins. New York:
Munn & Co., Publishers, 1893.” On page 63, title
“Candles,” I find under the heading “Cerophnne .
Candles” the following :
“Melt over a water batli 50 parts of stearic
acid and 5 to 5i/-> parts of bleached beeswax
* * * Pour the mass into molds, which
have been heated to the sumo temperature, but
avoid stirring.” (Italics mine.)
Another book, entitled “Chemical Technology or
Chemistry in Its Applications to Arts and Manu¬
factures.” Edited by Groves & Thorp,— the same
purporting to be “Vol. II. Lighting,” etc., and pur¬
porting to be published in Philadelphia in 1895 by
P. Blackiston, Son & Co., contains on page 79 ref¬
erence to Binn’s Machine for making candles. This
Machine is attributed to the year 1801, and the
leading idea of it is said to be “the alternate appli¬
cation of heat and cold (in the form of steam and
water respectively) to the molds ■* * *” Groves
& Thorp contains on the same page 79, as “Figure
38,” a cut of this Machine. The’ article goes on to
speak of the alternate proceedings :
“according as to whether the molds were to
be heated for the reception of the material or
cooled after being charged with it.” (Italics
The same Groves and Thorp publication, on pages
80 aud 81, refers to “Palmers First Machine” and
“Tucks Machines.” The latter is illustrated in Fig¬
ures 40 and 41 (on page 82 of the Volume) “in
which he employed steam and cold water for vary¬
ing the temperature of the molds.”
A third volume is entitled “Soaps and Candles.
Edited by James Cameron,”, etc. It purports to be
246
C. A. h. illissio.
the second edition, published in London by J. A.
Churchill in ISOli. On pages 2<><>-2G7-2GS of this vol¬
ume, I find descriptions of molding stearine, sperm,
parafltn, and eoniposite cnmlles, respectively. The
paragraphs referred to note that as a general rule
the mold should be heated to about the temperature
of the solidifying point of the material used; that
with some compositions the mold should be slightly
1° hotter than this temperature, and with others
slightly below this temperature.
I likewise produce British patent No. 454 of
1856 to Field & Humfrcy for "Improvements in the
manufacture of Paraffine Candles.” O11 page 3 of
this patent I find the following:
“DESCRIPTION OF THE PROCESS.
“We take paraillne and melt it, and at a tem¬
perature of about 140° Fahrenheit run it into
caudle molds heated to the same temperature,
or rather higher. The pipes thus filled are al¬
lowed to stand a few minutes, to permit the air
bubbles to escape and rise to the surface and
are then plunged into cold water. This’ sud¬
den cooling qf the parnltinc prevents its form¬
ing itself into crystals, and ive thus obtain
candles nearly transparent, and which will
draw freely from the pipes.
“For paraffines of good quality a wick of or¬
dinary plaited cotton can be used, and by dip¬
ping tlie cotton wick into a weak solution of
hoiacic acid (say four or eight grains of bor-
acie acid to an ounce of distilled water) the
ash of the cotton wick will be fluxed, and the
caudles burn with a bright and clear end We
are aware that the. proems of filling the molds
ot nnd dipping them suddenly into cold water
applle<1 *9,' tl,e manufacture of other
JPf1® of_ candles, such as candles made
of piessed lard; wo therefore claim only the ap¬
plication of tlie process hereiu-before described
0. A. If. Massie. 247
to the manufacture of candles made entirely
or partly of paraffine.”
I likewise produce U. S. patent No. 8G,059,
grunted Jan. 19, 1S69, to Cowles, for an Improved
Machine for Jinking Candles. This patentee directs
the heating of tlie mold before tlie molten material
is introduced and tlie subsequent chilling of the
molds by cold water. Near the bottom of tlie sec- 10
ond column of jmge 2 I find :
“Steam or hot water is then let into the
trough 6, through tlie perforations along the
sides of tlie pipe 0, and when the molds are suf¬
ficiently wanned, the melted stuff is poured in¬
to the receptacle c3, from whence it runs into
and fills the molds. Cold water is then intro¬
duced, by tlie pipe d, * * *” (Italics
And in the next column of the Cowles patent I 20
find this statement of the general knowledge in
18C9:
“I am aware that it is not new to enclose the
molding-pipes or tubes within a tight chamber
upon a frame, so that, at pleasure, water can be
admitted to chill the tubes, or steam to heat
them,
U. S. patent No. 182,547, granted Sept. 26, 1876,
to Bingham, for Improvement in Apparatus for 30
Casting Composition Rollers for Printers, in the
first column of page 2, refers to tlie desirability of
heating the cylindrical molds by steam, “before the
pouring operation;” and iu tlie next paragraph
directs the introduction of a current of cold water
so as to chill the contents of the molds.
. U. S. patent No. 419,914, granted Jan. 21, 1890,
to Bingham, for Apparatus for Making Printers’
Rollers, illustrates and describes, an apparatus in 40
0. A. L. Massie.
which steam is admitted around the cylindrical
mold for lieatiug it before the molten composition
is introduced, and for introducing water after the
material has been introduced in order to cool and set
tile composition.
U. S. patent No. 545, 35G, granted Aug. 27, 1895,
to Fournier, for Apparatus for Molding Candles,
10 shows and describes a plurality of cylindrical
molds having means for admitting hot and cold
water around the exterior of the molds. In lines
7S-87 of page 1 thereof I find the following:
“The molds 10 are arranged in groups in
boxes or tanks 17, the said boxes being ar¬
ranged to alternately receive hot and cold
water, the hot water surrounding the molds be¬
fore tlie operation of molding, after which the
hot water is discharged and cold water is ad¬
mitted to surround the molds to hasten the
20 cooling and setting of the candles * * * ”
(Italics mine.)
From the foregoing references it will be seen that
it was a common expedient in molding cylindrical
articles of wax or wax-like composition to heat the
mold ( either before or after introducing the molten
material) and subsequently to apply cold water in
order to hasten the chilling.
I have also pointed out that, broadly stated, the
30 process set forth in the Joyce patent is a casting
process and not a phonographic process. I mean by
this, that to constitute a process “a phonographic
process,” the process should be directed to overcom¬
ing certain difficulties peculiar to the phonographic
art. But since the Joyce Specification does not do
this, his process cannot be regarded as a process
peculiar to the phonographic art. Therefore, in my
opinion, at the date of the application for the Joyce
patent in suit, in the casting of cylindrical sound-
40 records, there was nothing novel whatever in' the
mere idea of employing a hot mold (whether that
mold bo heated before or subsequent to filling) ;
and there was likewise nothing novel in subse¬
quently applying cold water in order to hasten the
chilling.
Q. 7. Do you find among the prior patents clas¬
sified in the talking-macliiuc art any disclosures of
the use of a hot cylindrical mold for producing
duplicate cylindrical sound-records? 10
A. In answering the last question T might have
included a number of other patents which have been
brought to my attention, among others, U. S. pat¬
ent No. 303,970, granted Aug. 20, 1SS4, to Appelt,
for Apparatus for Coating Drawing-Rollers. This
is another illustration of the use of a cylindrical
mold for casting, by melting the material and pour¬
ing it into the mold. The mold is brought to a high
temperature by a hot water bath, which Appelt
points out “will prevent this compound from be-
coming chilled while rising gradually in the tube;”
and subsequently tlie mold with its molten contents
is allowed to remain a short time in the hot water,
aftbr which they are placed into a cold water bath,
which sliriuks tlie casting and permits it to be easily
drawn out of the cylindrical tube.
Now, answering Q. 7, 1 call attention to the U. S.
patent No. 528,273, granted Oct. 30, 1S94, to Lioret,
and to British patent No. 1,478 of 1894, to Young. 30
I/iorct is dealing with cylindrical sound-records,
and among other things names in the second col¬
umn of page 2 what lie calls a “galvauo-plastic
mold,” — this is, a cylindrical mold formed by elec¬
tro-deposition upon tlie original cylindrical sound-
record, the mold having within its bore the reverse
of tlie irregularities 011 the surface of the original
sound-record. He employs this mold for producing
duplicate sound-records of celluloid, by tlie com¬
bined use of heat and pressure. He uses a hot mold, 40
250 C. A. L. Mamie.
against the surface of which the celluloid is forced
by pressure. I am aware of the fact that this Lioret
process is not a “casting process,” since he was not
dealing with melted material that could be poured
into the mold, as in case of Joyce. Hut, as soon as
one undertook to use a waxlike fusible composition
in place of celluloid, he could avail himself of the
expedients already well-known in casting with
fusible wax-like materials, including the preheat¬
ing of tlie mold and the subsequent application of
cold water. And this subsequent application of
cold water is expressly set out in the same passage
iu the Lioret patent.
The Young British patent discloses the use of an
ordinary cylindrical mold, such as hitherto de¬
scribed, formed by electro-deposition upon the or¬
dinary cylindrical sound-record. Young uses his
mold iu the same way as above set forth for Lioret j
that is, he preheats it, places within it a very thin
shell of celluloid which is softened by the heat al¬
ready imparted to the mold, and applies pressure.
It is true that Young, using a very thin shell of cel¬
luloid, withdraws his duplicate sound-record from
the cylindrical mold by “collapsing” it. But, as I
suggested in connection with the Lioret patent, as
soon as one undertook to employ a wax-like fusible
composition in place of the thin shell of celluloid,
ho could avail himself of the expedients already
pointed out as well known in casting with such
fusible materials, including the pre-heating of the
mold and the subsequent application of cold water
(both directed by Young); and, from the very
nature of the material used, upon cooling it would
shrink away, from the mold sufficiently to be with¬
drawn without collapsing it. In support of this
last statement I quote from Judge Platt’s decision
upon an Edison patent, when speaking of the fact
that Young was using a thin strip of celluloid,—
as follows :
G. A. Jj. Mosaic. 251
"By using a material then well-known in the
art, with a higher co-efficient of expansion and
contraction, it would seem that the necessity
for collapsing would have been obviated.”
National 1‘ltoiioi/rupli Co. vs. American Gra-
phophone Co:, 135 Fed. Bcp., 811.
Q. 8. Please consider specifically Joyce’s claims
here in suit, and state what you find novel therein?
A. Claim 3 of the Joyce patent assumes the pres¬
ence of what is called “a hot, seamless, tubular rec¬
ord-mold,” — which is in brief an ordinary cylindri¬
cal mold having within its bore the reverse of the
record-groove of an ordinary’ sound-record. The
Claim further assumes the presence and availability
of the molten material, which is spoken of as
“fused wax-like material at substantially tlie same
temperature as the mold.” The temperature of the
mold is preferably only about the meltiug-poiut of
the wax (see lines 102-3 of p. 1). The presence of
these two articles (the hot mold, and the molten
material) forms no part of tlie “process.” These
two articles may be regarded as the tools or imple¬
ments with which tlie jirocess is to be carried out.
Having . these two implements available, the
Claim recites three steps as constituting the pro-
(1) Pouring the molten material into the
mold ;
(2) Cooling the mold mul contents * * * ;
and
(3) Removing the hardened casting longi¬
tudinally from the mold.
There is absolutely no step directed by this Claim
that is not taken in every rnsting operation. It
should be noticed tliat the Claim does not direct us
to heat tlie mold, — the heating of the mold forms no
Claim;”' 1 can And nothing novel in it.
'01aim 4 is the-same in substance as'Claim’3, dif¬
fering therefrom solely in reciting that he first al¬
lows the material to set and then cools it. As the
method of cooling-described by the patent'ConBists
in the application of cold’water, I take this passage
to-mean that the Claim directs ussot to plunge the
mold and its molten contents into -water'as soon as
the mold has been filled,but to allow the liquid con¬
tents to cool in -the air until the ‘wax ilias ‘become
solid, -and thereafter to apply the cold water treat¬
ment. With ‘regal'd to this Claim, iin my opinion,
it does'not- differ in substance 'from the proccss'dis-
closed in 01aim.3,-and contains no novel 'Step. In
the second place, if we 'emphasize the fact that the
Claim directs'US'to'delay the application of the cold
water .until after the wax has becoine-sOlid, clearly
defendant does not practice this process, because
defendant plunges its mold containing the molten
wax immediately into the cold-water bath, while the
wax is still not only molten ‘but at an abnormally
high temperature, 'fnr above its melting point.
Claim 0 -is ‘in substance identical' with Claims.
It -presupposes 'the presence and availability of the
same two ‘implements, namely: (1) the hot mold;
and (-2) the melted wax, — which, iof course form-no
part of the process, but are merdy the implements
with, which the process is to be carried out. Claim
6 recites the same tliree. steps -recited by Claim 3,
namely.: first, ipour, the melted - wax into the hot
mold; isecondjocoohithencontents,— speoifically by
placing the -mold in a water 'bath ; -and, third, take
the hardened casting lengthwise out of the mold.
This • Claim also is utterly -wanting in unovelty.
Each step called, for is .old, .and the. succession -of
steps is old. In costing any cylindrical (object >we
must have the material in a molten condition, and
the references cited dn a previous answer show that
254 0. A. L. Massie.
it was old to have the mold also in a heated condi¬
tion. We would then, in any casting process, pour
the melted material into the mold; we would then
cool the mold and its contents; and we would final¬
ly withdraw the casting from the mold, and if the
shape be cylindrical we would withdraw it in a
direct longitudinal manner, what Judge Platt
calls “lengthwise.”
Q. 9. You have said that in your opinion the al¬
leged novelty of the Claims of the Joyce patent here
sued on consists in heating the mold before the
melted wax is poured in, — that is, in pre-heating
the mold. Do you find any statements in the file-
wrapper and contents of the Joyce application
whicli eventuated in the Joyce patent No. 831, GC8
in suit, that bears out your conclusions?
A. I certainly do. The file-wrapper is very vol¬
uminous. The application was filed Oct 13, 1897;
and was not allowed until July G, 190G, nearly nine
years, and the patent did not issue until some
months after that. Without searching through
this entire mass, I note that Claims 3, 4, 5 and G
having been rejected by the Patent Office on Jan.
In reply to this, on April 10, 190G, the Patent
Office cited the English patent of Young, saying
this patent
G, 190G, in view of certain patents of Edison, Mr.
Prank L. Dyer, the attorney for the applicant, on
March 10, 190G, presented an argument, saying,
among other things:
“Each of these Claims specifies * * * the
use of a hot mold. This feature of the pro¬
cess * * * prevents the wax from instantly
congealing upon coming in contact with the
surface of the mold » • * » (x,nst italics
mine).
40 . “discloses a previously heated mold » * * »
In reply to this rejection of the Claims here in
suit, on June 14, 190G, Mr. Dyer made an argu¬
ment in the course of which he said :
“There is much more likelihood of entrap¬
ping air in a casting operation, and in order to
prevent this the mold is heated to the melting-
point of the wax before the molten wax is in¬
troduced * * * ” (Italics mine).
As the result of these arguments— viz : that the
invention is limited to pro-heating the mold in a
casting process— the Claims, whicli had been re¬
jected upon prior patents, were allowed. It ap¬
pears, therefore, that the consideration for allow¬
ing the Claims here sued on was that the applicant
and the Patent Office limited the Claims not only
to the casting process, but also to the pre-heating
of the mold ( before the wax is poured in).
Q. 10. What do you understand is the process
set forth in Claims 3, 4 and 5 of the Miller & Ayls-
worth process patent No. G83,G15, here in suit?
A. This patent purports to be for a method of
duplicating phonographic records, and it presup¬
poses a suitable matrix or mold, and a tank or other
vessel containing suitable wax-like record-material
in a molten condition. Of course, the mold, the
tank, and the melted wax form no pnrt of the pro¬
cess. The process of this patent can scarcely be
better described than in the language of the com¬
panion Aylsworth & Miller Apparatus patent No.
683,676, also sued on, as follows: The process
(italics mine)
“consists in immersing in a bath of molten
wax-like coagulable material a matrix or mold
which carries on its bore the representation in
negative or relief of the record to be dupli-
that is to say, the mold is plunged benenth the sur¬
face of the molten wax; yet this mold. is not im¬
mersed haphazard, it must be immersed in a 'par¬
ticular manner —
“whereby the molten material will Oil the bore
of the matrix or mold, but will be excluded
from its exterior ” —
which last is an important feature of the invention.
And this is not all, the process must be carried out
in such a manner as that
“the latter to coagulate or chill upon the bore
of the matrix until a layer of the desired thick¬
ness. lms been secured,” —
20 and right here comes in another essential feature
of tlie process, namely: that after this layer has
been secured the mold must no longer he permitted
to remain immersed in the bath, —
“after which the material or mold is removed
from the bath of molten material and the bore
of. the duplicate finished by a reaming-tool, the
resulting , duplicate being finally removed from
the matrix or mold by shrinking.”
30 The chief principle underlying this Miller & Ayls-
worth process is that aco/rf metallic surface brought
into contact with melted' wax will chill the wax;
and if the molted, wax be at a temperature only
about twenty to forty degrees above its melting-
point (see lines 22-3 of page 2 of the patent), then
. the cold metal surface will chill the wax sufficiently
to solidify it; Yet this is not all : two precautions
must be taken in order not to defeat the purpose
of the process. The mold must not be permitted to
40 remain in contact with a mass or large quantity
0. A. L. il lassie.
257
of the molten wax, lest the metal itself should he
heated to the temperature of the melted wax, which
would result in re-melting the coagulated deposit
already produced; and, besides, the mass of hot
liquid wax must he kept out of contact with the
outer side of the metal mold, lest the metal he
heated and there!)}' in turn re-melt the coagulated
deposit. The patentees provide a casing or shell
that surrounds the mold to keep the hot wax from 10
contact with it, and a collar or cap at the top to
prevent the material from overflowing the top of
the mold (line 10 of page 2 of the patent).
In short, the purpose of the first portion of the
process is to secure upon the bore of the mold a
coagulated deposit of the wax; and this deposit can
be secured only by (1) employing a cold mold;
(2) protecting the exterior of the mold from con¬
tact with the hot wax — i. e., keeping the mol’d cool ;
and (3) removing the mold (with its coagulated — 20
solid — deposit) . from the vat before the mold be¬
comes heated to the temperature of the molten wax.
In addition to these three essentials, I understand
that in producing molded sound-records by this
.Miller & Aylsworth process there is still another
indispensable condition, namely: (4) the melted
wax must he introduced from the bottom of the
mold, and it must be introduced in a gentle, quiet
manner so as not to stir up the liquid and cause air
bubbles, or produce an uneven deposit (striations) ;
and (5) the temperature of the wax must not be
much above its melting point.
Turning now to Claim 3, I observe that this
Claim calls for two implements for carrying out the
process, first, the mold; and, second, the mass of
melted wax (in a tank or vat). The steps called
for by the Claim arc three, viz:
First, immersing the mold in the molded wax,
in a particular manner ; 40
258
C. A . Ij. Mastic.
Second, finishing the bore of the “duplicate”
so secured; and
Third, separating the duplicate from the
Tlic particular manner in which the mold is to
lie immersed, us already indicated, consists of first
lowering it gently and gradually so that the incited
wax will rise within the mold from the bottom,
in a quiet, placid manner; second, in s II eo si
protecting the outside of the mold from being heat¬
ed by the wax, and in preventing the wax from
overflowing the top of the mold; and, third, in
removing the mold with its solid wax deposit before
the mold has become healed to the temperature of
the melted wa.r. Tf any of these three tilings be
omitted, we do not get the solidified casting, and
we do not carry out the process of the patent.
In short, Claim 3 requires, as an essential, that
a cold mold with its bottom open must he quietly
lowered into the wax only slightly (20° to 40°)
above Us melting-point, and the mold must he re¬
moved before it becomes heated.
Another essential of Claim 3 is that the bore of
the duplicate must ho “finished” before the duplicate
is removed from the matrix. “Finishing” is de¬
scribed iu the Specification as trimming off the
upper end of the duplicate flush with the surface
of the mold, and in reaming out tin* boro with a
suitable tool so ns to produce concentric ribs.
Claims 4 and 5 are the same in substance ns
Claim 3. Claim 4 is identical in language with
Claim 3, except that the last clause of Claim 3
says “and in separating the duplicate or matrix
from tiie mold”; whereas Claim 4 uses the word
“shrinking” instead of “separating.” Claim 5 is
identical in language with Chum 3. exempt that
Claim 5 directs us to “finish” tlic bore of the dup¬
licate “before the latter has become hard.” I take
tliis to mean tlmt the physical operation of cutting
. or reaming out the bore of the deposit so as to
produce the ribs must he performed while the ma¬
terial is still in what may bo called a semi-plastic
condition, and before it has resumed its normal
hardness.
Q. 11. Do I understand you to say that Claims
3, 4 and 5 of the Hiller & Aylsworlh Process patent ^
here in suit require that a cold mold must bo im¬
mersed, • and that precautions must be taken to
prevent the mold from becoming heated?
A. That is absolutely correct. For instance,
on page 1 of the Hiller & Aylsworth- Specification,
circa line 40, the patentees say they make duplicates
by a process of immersing the mold into the melted
material, “whereby a coating or covering of such
material will he deposited upon the interior of the
matrix or mold by reason of the lower temperature 20
of the matrix or mold” ( italics mine) . Again, on
page 2, circa line 20, they say the mold is kept
immersed in the melted wax for the time required
“to secure a deposit of the wax-like material of the
required thickness” (italics mine). They go on to
say when a mold about a quarter of an incli thick
is left in the wax at a temperature of about twenty
to forty degrees above its melting-point, within
three minutes a deposit of the desired thickness will go
have formed; that is, there will lie present, deposited
around the bore, a solidified mass of wax.
The patentees continue with the precaution that
"in no instance” should the mold remain immersed
“for a long eno'ugh time to allow its temperature
to be raised sufficiently to permit the deposited
molten material thereon to become remelted” (circa
line 35 of page 2). Of course the use of the ad¬
jective “molten” just quoted is erroneous, because 40
2G0 0. A. Tj. Massie.
if “molten” it could not become “re-melted.” The
patent continues:
“Tlie reduced temperature of the matrix or
mold relative to the temperature of the molten
material causes the latter to become coagulated
or chilled on the interior of the matrix, and
to deposit thereon to the thickness desired”
(italics mine).
This passage also can only mean flint the mold
must be cold, and must not be re-heated lest the
solidified deposit “become re-melted.”
Again, at line i>0, the patentees refer to conditions
where the composition would not normally become
solidified on contact with an ordinary mold; in
Which case, the patent directs Hint the mold be
made of increased thickness “or be artificially cooled
20 before the dipping operation” — thus e1nphn.si7.ing
the fact that the mold must be cold in the first
instance and must lie 1,-epl from heating.
Referring again to the f’laims in suit, all three
of them direct us to immerse the mold into the
melted wax — yet not in a linplinzard way, lint only
in a particular manner “whereby” Hie specified
result will follow, namely: the securing (upon the
bore of tlie mold) of a solidified deposit of the wax.
30 Tlie language of tlie Claims is “whereby tlie ma¬
terial^ ’will coagulate * * * and chill * * •”
on the bore; and it innst “coagulate” and “cliill”
on the bore “in a layer of tlie desired thickness.”
In order that the act of “immersing” enn be per¬
formed in a manner “whereby” these results can
he produced, the mold Hint is immersed must be
cold. And in order that this deposited layer may
be of tlie “desired thickness” (such a thickness ns
to permit subsequent reaming out), tlie mold must
40 not be permitted to become materially heated, and
the “molten wax” must not be much above its melt¬
ing-point.
I11 short, tlie nature of the process, the language
of the Specification, and the language of the Claims
in suit — all. require that tlie mold must be cold;
that the wax must not be heated much above its
melting-point; that tlie mold must not be allowed
to reach the temperature of melted wax; and that
the mold must lie removed from the vat before the
solidified deposit can be re-melted.
Q. 12. I’ lease compare the process set forth by
Claims 3, 4 and 5 of the Miller & Aylswortli process
patent here in suit with the process set forth in
Edison patent No. 007,002, granted Feb. 5, 1901,
upon an application filed May S, 1900 — and par¬
ticularly witii reference to the process disclosed in
Claims 2, 4 and 5 of tlie said Edison patent.
A. The Edison patent and the patent in suit
describe tlie employment of a “continuous” mold
(that is, a unitary or seamless mold, as distin¬
guished from a mold made up of several parts).
The wax-like sound-record material is melted and
introduced into this mold, and is then allowed to
cool and set, — and artificial cooling may also be
employed, as by the application of cold water or
of an air-blast.
The Edison patent discloses the cylindrical mold
as having an open bottom, and mounted above a
tank containing the molted “wax,” and provided
with a piston-plunger (having a core), which serves
to draw tlie melted wax upward into the mold.
Edison says the temperature of the mold is “relative¬
ly cold” (line 35 of page 2) ; and the melted wax
being brought into contact with the cold surface
of the bore of the mold will immediately be reduced
in temperature aud solidify (Edison, p. 2, col. 2).
262
G. A. h. Massie.
At tlie top of the second column of page 2, the
Edison patent says :
“The liquid molten material entering the
mold 9 will engage all portions of the record
formed on the bore thereof, and the materially
lower temperature of the mold will result in
the almost instantaneous chilling of the’ sur¬
face of the molten material therein” (italics
The patentee then recommends the use of cold water
or a blast of cold air for chilling the surface of the
molten material; and says that this chilling “re¬
sults in the selling of the positive impression thus
secured”; and that as soon as the material lias been
chilled throughout its entire thickness (line 90 of
page 2) the mold with its contents are removed
from above the tank and “allowed to cool by ex¬
posure to a cold atmosphere or by an air-blast until
the solidified material has contracted away from the
bore of the mold, so as to permit it to be removed
therefrom by forcing the plunger downward.”
The passages just cited show in the first place a
two-step cooling process; and in the second place,
that the casting is disengaged from the bore of the
mold by reason of ,its shrinkage due to the cooling,
and is removed from the moid by a direct longitud¬
inal movement.
The gist of this Edison .process I understand to
be the use of a cold mold with a melted material,
the introduction of the melted material into contact
with [the cold bore of the mold (whereby the
material is solidified so ns to produce a deposit),
the allowing or causing the material to set (so as
to become a hardened casting), and the withdrawal
of the casting from the bore. Not only is the mold
cold to begin with, but there is nothing to raise its
temperature except the slight amount of molten
material brought in contact with it, the air cir¬
culating around the outside of the mold will tend
to counteract any rise of temperature imparted to
the mold.
Claims 2 and 4 of the Edison patent inquired of
clearly and concisely describe this process. These
two Claims are the same in substance. The first
step in each Claim is said to consist in securing
the mold. Having the mold and the melted wax,
the succeeding steps may be formulated as follows :
(1) Introducing the melted wax into the mold;
(2) Allowing the molteu wax to set (become
solidified) ;
(3) Contracting the set material (which I un¬
derstand tp mean, “applying cold water or cold air
to the already solid, but still warm casting”), in
order to cause the same to shrink away from the 20
mold so as to leave an annular space separating
the casting from the mold ; and
(4) Removing the casting, or duplicate sound-
record, from the mold by a direct longitudinal move¬
ment.
■ Comparing the process claimed by Claims 2 and
4 of the Edison patent No. 067,602, with Claims 3,
4 and 5 of the Miller & Aylsworth process patent
here in suit, and noting that the Miller & Aylsworth
process requires that we must have a continuous 30
or unitary mold (as in the Edison patent), and
that this mold must be void as described in the
Edison patent, I find that the process called for by
Claim 3 differs from the process of the Edison
patent in the following respects:
(1) Where Edison merely says he introduces
the melted wax into tiie mold, Miller & Aylsworth
introduce it by “immersing” the mold in the par¬
ticular manner already pointed out. If “immer- 40
0. A. h. Mimic.
sion,” ns used in Miller & Aylsworth’s Claim, means
merely the submerging of the mold in order to All
it, there would be no difference between this pro¬
ceeding and the corresponding step that Edison
employs. In order to bring to light the difference,
in this respect, between the two processes, we must
bear in mind that Miller & Aylsworth immerse their
mold in the particular manner “whereby” the speci-
10 fled results are to be obtained ;
(2) The second step in the Edison patented
process is the “allowing the molten material to set,”
which is done with the mold in the open air; whereas
the corresponding stop in the Miller & Aylsworth
Claims (the solidifying of the material upon the
bore of the mold, in a layer of the desired thickness)
is brought about while the mold is submerged;
(3) As the third step the process of the two
20 Edison Claims calls for the additional cooling of
the casting, so as to shrink it away from the mold;
whereas Miller & Aylsworth undertake to “finish”
the bore of the casting before they shrink it away
from the mold ;
(4) Each patented process removes the cast
duplicates from the matrix in the same manner.
In short, I find the process claimed by the three
Claims of the Miller & Aylsworth patent in suit to
30 be broadly the same as the process clnimed by
Claims 2 and 4 of the said Edison patent -No.
007,002; but that the Miller & Aylsworth process
differs specifically from the patented Edison process
in (1) obtaining the solidified casting while the
mold is submerged, and (2) in finishing the dup¬
licate before it is removed from the mold.
Claim 5 of the said Edison patent is the same
in substance as Claims 2 nnd 4 already considered,
except that it specifics that a core is employed in
40 the center of the mold, around which core the
molten material is introduced, — which causes the
casting to be hollow. This is another respect in
which the process of Miller & Aylsworth departs
from the process of the Edison patent, namely, in
dispensing with the central core.
Q. 13. Please compare defendant’s process with
Claims 3.. 4 and 5 of the Miller & Aylsworth patent
in suit?
A. Defendants mold is provided with a core,
and in this respect is like the mold of the Edison 10
patent No. 007, C02 (just referred to), and is unlike
the mold of M iller & Aylsworth. Defendant’s mold
is filled with the melted wax from the top, as dis¬
tinguished from 111 ling from the bottom as in Edi¬
son and Miller & Aylsworth. Defendant’s melted
wax is allowed (or caused) to solidify while the
mold is in the air, as in Edison’s process — and not
while the mold is submerged as in Miller & Ayls-
worth’s process. Defendant’s cast duplicate is then
chilled by the application of cold water, and subse¬
quently by a cold air-blast, just as in the Edison
patent referred to, as distinguished from the Miller
& Aylsworth process which first allows the material
to set (in the air), and then applies cold water.
Defendant’s molded duplicate is scraped out while
in the mold, hut is “finished” after its removal from
the mold, as in the Edison patent, as distinguished
from finishing the duplicate before removing from
the mold (as in the Miller & Aylsworth process) .
Thus it is clear that defendant’s process is more
like the process claimed by Claims 2 and 4 of the
Edison patent No. 6G7,GG2, than it is like the process
of the Miller & Aylsworth patent iu suit.
But defendant’s process differs very radically
from both Edison’s and Miller & Aylsworth’s in the '
essential feature that whereas in the two patents the
melted wax solidifies immediately upon coining in
contact with the cold mold, and whereas in the two 40
0. it. L. Mussie.
patents the colil mokl is not allowed to become
heated, — in ilefeiHliiut’s process the mold is brought
to a temperature ot 150° above the melting-point of
the wax, and this high temperature of the wax and
the mold is maintained for an appreciable time.
This distinctive difference between defendant’s
process on the one hand, and the process broadly
common to the Edison patent and the Miller & Ayls-
wortli patent on the other hand, is clearly stated by
Judge Platt in the decision already referred to.
Tlie language applied to the Edison process in that
decision is also applicable to tlie Miller & Aylsworth
process. Judge Platt said:
“Air bubbles in the melted material drove
Mr. Edison away from casting for many years,
but in this patent he reverts to casting, and
avoids air bubbles by introducing tlie melted
wax from the bottom upwardly into a very cold
mold, so as to produce an almost instantaneous
chilling of the wax.”
And the foregoing epitome of the Edison patent
is true of the Stiller & Aylsworth patent in suit.
Judge Platt continues :
"Defendant undertakes to get rid of tlie air
bubbles by superheating the melted wax after
it has been poured into the mold at the top ,
and then proceeds to suddenly chilling it down
from its high temperature. This is done under
Lctters-pntent No. (iS2,!)01 anil (.82,902, Sept.
17, 1901. Mr. Macdonald discovered that he
could do this when in molding blanks in 1890
* * * and this knowledge led directly to
the defendant’s patents. * * » Mr. Edison
[and Miller & Aylsworth] eliminates air bub¬
bles by one process, and tlie defendant elim¬
inates them by another and distinctively novel
proeess.” (Italics mine.)
National Phonograph Co. vs. American
Oraphophone Co., 135 E. R. 814.
Q. 14. Do you know whether or not the Edison
patent No. GG7,GG2, above referred to by you, was
involved in the suit before Judge I’latt, from which
you have just quoted; and, if so, which Claims
thereof?
A. The Edison patent No. GG7,GG2, above re¬
ferred to, was involved in the' case reported in 135
Federal Reporter, and was the patent of which
Judge Platt was speaking iu the quotation just 10
given. The complainant declared on Claims 1, 2,
4 and 5 thereof. The Bill of Complaint was dis¬
missed with costs, by a Decree entered March 30,
1905. I believe Mr. Mauro, in his deposition, has
already set out the fact that this decision has been
acquiesced in by the complainant therein.
Q. 15. Have you read the Aylsworth & Miller
Apparatus patent No. GS3,G7G, here in suit, and do
you understand the same?
A. I have read the said patent, and 1 believe ^0
I understand it.
Q. 1G. Will you please indicate, for the conveni¬
ence of the Court, the concrete features shown and
described m the said patent, corresponding to the
several elements recited in Claims G anil 7 of tlie
said Aylsworth & Miller patent?
A. This apparatus is stated in the patent to be
for carrying out the process disclosed by the Miller
& Aylsworth process patent already considered by
me. The two patents were issued on the same date, 80
upon applications (lied in tlie Patent Oflice ou tlie
same date. Speaking broadly, the apparatus com¬
prises a tank or vat containing the melted wax, and
having beneath it a gas burner or other source of
heat; au open-bottomed cylindrical mold,, having a
can or shell surrounding it to protect the outside
of the mold, anil having a collar or “cap” at the
top to prevent the material from flowing over at the
top; and a handle by means of which the mold and 40
0. A. h. Mimic.
its surrounding parts can bo lowered into the tank
and drawn up again. The bore of the mold con¬
tains a reverse of tlie original sound-record; and
in the bottom of tlie hollow mold is arranged a
reverse name-plate, so that the casting will present
any desired lettering. I linve said that the mold
was “open-bottomed.” At tlie bottom of the mold
is a disc having a large bole in its center, so as to
10 provide an annular ledge or sent around the bottom
of the mold. The reverse letters or characters (to
be imparted to the duplicate) are upon this ledge.
In addition to the foregoing, the patent shows and
describes a reaming-device, comprising a rcvoluble
chuck and an adjustable reaming-knife.
I will now refer specifically to Claims G and 7.
These two Claims are the same in substance. Claim
G calls for only two positively-recited elements,
2Q namely : means for securing the solid casting; and
means for finishing the interior of the latter. That
is, the first element can he found in I-'ig. 1 (and
in Fig. 1 only), and the second element in Fig. 2
(and in Fig. 2 only).
Claim G specifies the second element as “means
for finishing the interior of the duplicate,” etc.;
Where Claim 7 specifies the second clement as
“menus for forming * * * a series of concen¬
tric ribs * * ; but the only means for finisli-
30 iug (Claim G) is the reaming device of Fig. 2,
which is the means for producing the series of ribs
called for by Claim 7.
Tlie first element is snid to be —
“means for securing a deposit of a wax-like
coagulable material upon the lore of the record-
matrix.” (Italics mine.)
Tlie word “deposit” indicates the “coagulated”
40 or solidified wax— as distinguished from the “mol,-
0. A. L. Mosaic.
209
ten” or liquid wax. “Securing” this deposit con¬
veys the same idea; we might get a liquid deposit
upon a surface, but it would not be secured, until
it had become solid so as to remain. The securing
of a “deposit” upon the bore of tlie matrix, em¬
phasizes tlie same idea. In short, the “means”
constituting the first element of Claims G and 7,
must be some instrumentality or instrumentalities
by which. we can obtain (lie desired casting, in the 10
form of a solid deposit, and upon the bore (and not
“throughout the entire hollow concavity”) ; and
this “means” must be the instrumentalities “sub¬
stantially as set forth” in the Specification and
Drawing, viz : the tank (11) having melted wax; the
cold mold (1), having an opening (G) in its bottom
through which the melted material can rise; to¬
gether with the shield (S) to keep the mold from
becoming heated. The “means” under discussion
also requires that this cold mold must not be al- 20
lowed to remain in the tank (11) until the mold lias
become heated, — otherwise there would no longer
be means for securing the wax in the form of a
deposit “upon the bore.”
In short, the first element of Claims G and 7 con¬
sists of the precise apparatus shown in Fig. 1, or a
colorable imitation thereof.
The second element of the two Claims, namely,
means for “finishing” the interior (Claim G) or
for forming the ribs (Claim 7), is the’rcaming ap¬
paratus of Fig. 2. I note that these two Claims
speak of these two elements as comprising a “com¬
bination.” I understand that the word “combina¬
tion,” in reference to mechanical structures, means
that the elements “in combination” co-operate with
each other to produce a single or unitary result;
that although such elements need not be acting
simultaneously, yet there must be a co-operation,
270
C. A. L. Mfassic.
in the sense Hint the operation of one element must
affect (or he affected by) the operation of the other
element. There is no such co-operation or mutant
effect existing between the two elements of Claims
0 and 7 of this Aylswortli & Miller patent in suit.
To say that there is a “combination” or “co-opera¬
tion” between the devices of Fig. 1 and the devices
of Fig. 2, seems to me like speaking of the “com-
10 bination” or "co-action” between the carpenter’s
plane, with which .a plank is smoothed, and the
paint-brush with which the planed surface is sub¬
sequently covered with paint. The two implements
(plane and brush) do contribute to produce the
single result, a smooth painted hoard ; hut they do
not co-act. ' Neither one modifies (or contributes
to) the action of the other.
In like manner, after the “means” constituting
20 the first element of the Claim, as disclosed in Fig. 1,
have performed their part of the work, so that we
have a solid casting with an irregular bore, this
casting could. he taken out of its mold and either
used just as it is (which would doubtless he rather
unsatisfactory) or smoothed out liy any finishing
implement. In short, the first-named “means” lias
performed its function and the result accomplished
is the same, whether we do or do .not employ the
second-named “means.” And in like manner, the
30 second-named “means” could lie employed upon any
hollow cylindrical object of wax-like material,
whether a blank cylinder or any other object; the
operation of the second-named “means” — the ream-
ing-appnratns — is not dependent upon, and is not in
any manner affected by, the operation of the first-
named “means.”
Q. 17. Whnt novelty do yon find in the appa¬
ratus set forth in Claims C and 7 of the Aylswortli
& Miller patent in suit?
10 A. As there is no real co-action or combination
between the two elements recited in these Claims,
I will consider each of the two elements separately.
The first element of Claims 0 and 7 I find in the
Edison patent No. 0G7,G(i2, already referred to,
granted Feb. 5, 1001, upon an application filed
May S, 1900. Tnat patent discloses “means for
securing a deposit of a wax-like congulablc material
upon the bore of a matrix or mold which carries the
representation of the record tohe duplicated,” (as
called for by the Miller & Aylswortli Claims G and
7), consisting of the following parts found in Edi¬
son’s Drawing, namely: the tank (1) containing
the molten material; the cold cylindrical record
mold (9), open at its bottom, and located above
the tank; and the piston-plunger (-1 — 7) for raising
into the mold, from the bottom, the melted wax,
which is coagulated immediately upon coming in
contact with the cold matrix-surface (9).
The second clement of the Aylswortli & Miller
Claims G and 7 in suit, the means for reaming, etc.,
is found in the said Edison patent and elsewhere.
It is true that the Edison patent speaks (line 113
of page 2) of reaming the cast duplicates to the
proper size, after Edison has spoken of removing
the duplicates from the mold. But the reamer
could he applied to the duplicate before the latter
has been removed from the mold. In fact, any
reamer for duplicate sound-records could he ap¬
plied to such duplicates either before or after they
are taken from the mold. Therefore, the said Edi¬
son patent discloses not only the first-recited ele¬
ment of Claims G and 7, but also “means” adapted
or suitable or capable of use “for finishing the in¬
terior of the duplicate while the latter is in position
within its mold” (Claim G) or adapted or capable
of use “for forming in the duplicate while the latter
is in position in the mold a series of concentric
ribs,” etc. (Claim 7).
0. A. L. Musaio.
Moreover, if there he any “combination” between
tlie two “means” recited in Claims 0 and 7 of Ayls-
worth & Miller, there is just as much combination
existing between the apparatus illustrated in Figs.
1 and 2 of the Edison patent referred to and the
reaming apparatus referred to in the second col¬
umn of page 2 of the said Edison patent Mo. GG7,C02.
I have referred specifically to this Edison patent,
not because it is the only one, but because I have
it conveniently at hand, and because this patent in
particular seems to me to be nearer kin to the
Aylswortli & Miller patent in the particular appa¬
ratus employed. If Claims G and 7 mean the com¬
bination of any means for getting a cast sound-
record and any means for reaming out the bore of
such casting, then the Claims are anticipated by
almost any. of the prior patents which disclose the
production of cast sound-records, because tlie ream¬
ing out of the bore of such castings has been a com¬
mon practice.
Q. 18. In answering tlie previous questions, did
you take into consideration the fact that Claim 7
specifies that the ribs to be produced are “concen¬
tric ribs” and not a continuous spiral rib?
A. 1 did, but I will point out that in the Edison
patent No. 114,701, granted Nov. 12, 18S9, reference
is made in general terms to —
“providing the interior of the cylindrical pho¬
nogram-blank, with ribs, flanges, ' or projec¬
tions * * * ” (line 20).
And Edison says:
“I prefer to form a spiral rib.”
Tills is a disclosure of “ribs” in gcncrnl and “spiral
ribs” in particular. The only intcrnnl ribs other
than spiral that would naturally occur to one are
either longitudinal ribs or concentric ribs. This
G. A. L. Massic.
same Edison patent likewise refers (near the top of
the second column) to reaming out the interior of
the phonogram-blanks.” It is true that the refer¬
ence does not refer to reaming these blanks out so ns
to produce ribs, but it shows that' the reaming out
of phonogram-cylinders was practiced and well
known long before the date of the Aylswortli &
Miller patent in suit.
U. S. patent No. 1S5,054, granted Dec. 5, 187G,
to Wilder, shows a chuck having a tapering bore in
which a frusto-conical hollow article is inserted and
revolved in order to ream out its interior face. In
Wilder’s drawing, A is the chuck and C is the taper¬
ing hollow article. The chuck and the article are re¬
volved by j;he slinft B. Not only is the interior of
the article reamed out, but a (concentric) groove
is cut near one end thereof. The cutting of a
plurality of sncli grooves, leaving a plurality of
“concentric ribs” would be obvious if such concen¬
tric ribs were desired.
I will call attention also to Edison patent No.
393, 4G2, granted Nov. 27, 1SSS, as illustrating the
practice of reaming out the interior of the cylindri¬
cal phonogram-blanks. Edison patent No. 393,403,
granted Nov. 27, 1S88, illustrates an apparatus for
the same purpose, although those two Edison pat¬
ents do not disclose any concentric ribs (but merely
a continuous taper bore). But, since the Edison
patent No. 414,701 (above referral to) discloses the
production of internal ribs, both spiral and of other
forms, there would be nothing novel in producing
coucentric internal ribs by reaming, in view of the
Wilder patent of 187G above referred to.
Although, for producing the spiral rib of the Edi¬
son patent No. 414,761, Mr. Edison says he prefers
to employ a core containing a spiral groove, — where¬
by the spiral rib is formed by the casting operation,
274 C. A. L. Mimic.-
yet, since lie indicates other forms of ribs, which I
understand to he either longitudinal or concentric;
and since a core containing concentric grooves
around which there should he produced (by casting)
a phonogram-blank having concentric ribs, could not
be removed from the casting, — the said Edison pat¬
ent No. 414,781, teaches 11s that we may produce a
cast phonogram cylinder, and ream out its Imre to
10 obtain concentric ribs.
In fact, without looking for any patent or refer¬
ence, it is a matter of common knowledge that wood¬
workers and metal-workers can produce, by means
of the ordinary turning-lathe, a series of concentric
ribs around (lie outside of an article. And I think
that it lias likewise been a matter of comnton knowl¬
edge for years that they could also produce a series
of concentric rings or ribs npon the inside of tubu-
20 lnr articles. There could lie nothing novel in ream¬
ing out the born of this particular tubular article
(cast sound-record) to produce concentric rings.
Q. 10. Please compare defendant’s apparatus
with tlie apparatus' set forth in Claims 0 and 7 of
the Aylsworth & Miller patent in suit.
A. The apparatus claimed by Aylsworth & Mil¬
ler consists of the two elements named, vis: the par¬
ticular instrumentalities shown in Fig. 1 and the
apparatus shown in Fig. 2, the two elements being
30 alleged to constitute a “combination.” As T have
already explained, the first “means” recited in these
two Clnims could not he considered ns 011// instru¬
mentalities for obtaining a cast sound-record, lint
require tlie nse of a cold mold, also the protection
from (and the prevention from) raising the temper¬
ature of this mold to the melting-point of the wax
etc. Defendant’s apparatus comprises an ordinnry
mold and means for heating this mold far above the
temperature of tlie melted wax, such “means” pre-
40 venting the formation (or “securing”) of a deposit
C. A. Ij. Massic. 275
■upon the lore of the mold. In short, defendant’s
“means” for obtaining its cast sound-record is en¬
tirely different from the “means” recited in Claims
0 and 7 of the Aylsworth & Miller patent in suit.
With regard to the second named “means” of
these Claims, as I have pointed out, any reamer or
other device for finishing the interior of the cast
cylinder could lie employed for that purpose either
(after) the casting hns been removed from its mold,
or before the casting hns been removed; conse¬
quently, any reaming-tool used with a record-cylin¬
der is “means for finishing the interior of the dupli¬
cate, while the latter is in position within, the mat-
rim or mold." Hut, I understand from the testi¬
mony given herein by Mr. Macdonald, that in de¬
fendant’s factory, although the interior of defen¬
dant’s cast sound-records is “scraped” while the
casting is still in position within its mold, yet the 20
finishing is done subscquenllg, after the casting has
been removed.
In short, defendant’s apparatus is not the al¬
leged “combination” recited in Clnims 0 and 7 for
two reasons: (1) defendant does not employ the
first-named “means” of these Claims, nor (2) does
defendant employ the second-named “means.”
If defendant’s apparatus and the apparatus of
the two Claims in suit were substantially the same, 30
they could be operated in substantially the same
manner to produce substantially the same results,
but this is not the case. The patented apparatus
is intended for carrying out the process of the Mil¬
ler & Aylsworth process patent in suit, by which
the solidification or coagulation of the wax is ob¬
tained immediately npon wax coining in contact
with a cold mold, while the mold is still immersed;
and when the mold is withdrawn from the vat, it
brings with it the already-formed and solidified 40
270 0. A. L. Massie.
casting. Defendant's apparatus could not produce
tliis result: The defendant’s apparatus comprises
tlie tank containing abnormally hoi wax, and there
is no means provided for preventing the metal mold
from becoming heated to (and above) the melting
point of the wax; consequently defendant’s appar¬
atus could not produce a coagulation of the wax
upon the bore of the mold, and defendant’s appnr-
10 atus could not bring out from tlie vat an already-
solidified casting. On tlie other hand, defendant’s
process could not be practiced by the Alyswortli &
Miller patented apparatus: Defendant’s process in
volves the superheating the wax while it is in con¬
tact witli tlie mold, which results in the super¬
heating of tlie mold itself, to a temperature far
above tlie melting point of the wnx; and tlie mold
of the patented apparatus could not be thus heated
on account of shield S which excludes heat from the
20 exterior of the mold.
Considering that defendant’s apparatus and the
patented apparatus are both intended for the pro¬
duction of cast sound-records, it is dilTicult to con¬
ceive of two instrumentalities in the same art that
are so radically different in essential points.
Q. 20. Please state for the convenience of tlie
Court what are the concrete things recited by Claim
5 of the Aylsworth & Miller pntent in suit?
30 A. Claim 5 differs from Claims C and 7 in two
respects : First, it does not include the reaming or
finishing apparatus; and second, it does refer to the
reverse letters or characters for producing in the
casting a suitable designation of the selection.
The positively-recited elements of Claim 5 are
three, namely:
1. The record-mold;
2; A disc at its bottom, carrying the reverse
40 designation of the sound-record; and
O. A. L. Massie.
3. “Means for depositing molten material
If we should consider this Claim absolutely with¬
out any reference to the specification and draw¬
ings, so as to understand that the Claim recites the
employment of any mold, with any closure at its
bottom carrying reverse letters or characters (to
be imparted to the product), and any “means” for
filling the mold, — such apparatus would, of course,
be absolutely lacking in novelty. The only respect
iu which such apjiaratus would differ from any
mold at all with a ladle or other means for filling
the mold, would be in the employment of tlie re¬
verse characters to be imprinted in the casting.
But this is a very common expedient. I refer, for
instance, to D. S. Letters Patent No. 359, G37, grant¬
ed March 22, 1887, to Schuberth for a Soap Press.
Schuberth, in lines 91-3 says :
“The die D may be engraved to produce the
impression upon the soap of a monogram,
trade-mark, or other character.”
If, however, we consider Claim 5 in suit in con¬
nection with the specification and drawings, then
it is clear that the mold and disc referred to must
have a large opening iu the bottom to permit the
melted wax to enter the mold; and in order to “de- gg
posit” the wax, the mold and its disc must be cold ,
means (such as shield 8) must be provided to pro¬
tect the outside of the mold from being heated ; and
means must also be provided for withdrawing the
mold from the vat before the mold becomes heated.
The use of the word “depositing” in Claim 5, in¬
stead of the word “introducing,” is significant. It
hns the same meaning as the phrase “securing a
deposit” in Claims 0 and 7 ; it means the same thing
as the expression “to secure a deposit” in line 3 of 40
278 C. A . L. Massic.
pnge 2 of tlie specification; and tlie same as the
phrase “to deposit thereon” in (ine 9 of page 2.
Therefore, as already indicated, the positive ele¬
ments called for by Claim 5 may he stated as fol-
1. A cold mold having a shield or other
means for protecting its exterior from heat,
10 and having an opening in its bottom to admit
tlie melted wax ;
2. A disc having a large opening in it and
seated beneath the mold, anil containing re¬
versed letters; and
3. Certain specified “means,” comprising' a
vat containing melted wax, the oi>eniugs C giv¬
ing access from the bottom upward into the
mold, and the cohlncss of the mold, as well as
the other means for preventing the mold from
becoming heated.
20 Q. 21. Please compare the apparatus of Claim 5
in suit with tlie apparatus shown and described in
the Edison patent No. GG7,GG2, granted Feb. 5, 1901,
and also compare the apparatus in Claim 5 with de¬
fendant’s apparatus.
A. If Claim 5 be read with tiller disregard to
tlie specification and drawings, I find precisely the
same elements in the said Edison patent — except
tlie use of tlie reverse letters for imprinting tlie dcs-
30 ignation of tlie sound-record. Thus, the first element
of Claim 5 is tlie mold which is indicated by refer¬
ence-numeral 9 in the said Edison patent; the disc
upon which the mold is said to be “seated” is the
disc or piston 4, which, in Edison’s Fig. 2, closes the
bottom of Edison’s mold 9; and the Edison patent
shows “means for depositing molten material with¬
in tlie matrix or mold* * * whereby the duplicate
record will be formed * * * ” In short, if Claim 5
be read with niter disregard to the Aylsworth & Mil-
40 ler Specification, it could be read literally upon the
0. A. L. Mussie.
279
said Edison patent, except for the use of the old ex¬
pedient of reversed letters for imparting a designa¬
tion to the cast article.
Eut giving to Clauu 5 its proper meaning, then I
find the following resemblances ;
1. Edison and Aylswortli & Miller have the same
cylindrical record-mold, but tlie Aylsworth & Miller
mold carries positive means (specifically shield 8)
for protecting the outside of the mold from contact
with the wax, while Edison docs not. In this re¬
spect defendant’s mold is like Edison’s mold. The
Aylsworth & Miller mold is open at its bottom, and
so is Edison’s, and means are provided to prevent
the wax from ilowing over tlie top; while defen¬
dant’s mold is closed at its bottom and i,s open at
its top and the wax is caused to ilow over the top.
Miller & Aylsworth and also Edison provide means
for prventing these molds from becoming heated;
whereas defendant provides, and actually uses,
means for causing his mold to become very hot.
2. As to the second element, tlie disc carrying
the letters, this disc is not intended as a closure,
but merely as a convenient location for the letters.
The Edison mold is open-ended as is the Aylsworth
& Miller, but it does not carry tlie reverse letters.
Defendant’s mold has an actual closure at its bot¬
tom, in which reverse letters may lie placed. This
is the only respect in which the defendant’s appar¬
atus approaches nearer to the Aylsworth & Miller
apparatus than to the Edison apparatus.
3. The third clement of Claim 5 is the “means”
indicated. This “means” comprises, among other
things, the void mold and other features which I
need not repeat. These features are found in the
Edison patent, via: meaus for making use of the
underlying principle of the companion Miller &
Aylsworth process patent, namely, the principle
that melted wax wheu applied to a cold surface will
become chilled aud will solidify. This third ele¬
ment of the Aylsworth & Miller Claim 5 in suit is
substantially identical with the corresponding fea¬
tures of the said Edison patent, and is radically
different from any “means” employed by defendant
for obtaining its solidified casting.
In short, when I compare the axiparatus in Claim
5 (either as a whole, or considering the elements
separately) with the said Edison apparatus and
with defendant’s apparatus — a triangular compari¬
son, I find that the Aylsworth & Miller apparatus is
substantially like the Edison axiparatus, and the
two patented axiparatuses are radically dilferent
from defendant’s apx>aratus. The sole xioiut of sim¬
ilarity that can be observed with respect to defen¬
dant’s apparatus and Aylsworth & Miller’s is the
use of the reverse lettering. This, as I have hither¬
to pointed out, is a common exxicdient.
Q. 22. Before closing this examination, I will
ask you to consider again the xirineiple of the Miller
6 Aylsworth process and the mode of operation of
the Aylsworth & Miller apparatus, in connection
with U. S. Letters-patent No. 95,015, granted Oct.
12, 1809, to Brunner, for Casting Hollow Articles?
A. Hitherto, in considering these two patents in
suit, I have in the main confined myself to stating
what the Claims recited, and to comparing the same
with defendant’s process and apparatus. The un¬
derlying principle of the two patents in suit con¬
sists, first, in submerging an open-bottom cold mold
into melted material, whereby (1) the material will
rise from the bottom upward into the bore of the
mold, and (2) the melted material upon coming in
contact with the cold mold will instantly chill and
become solidified in a layer against the bore of the
mold; and, second, in withdrawing the mold from
the vat containing the melted material before the
solidified deposit can re-melt, whereby the remain¬
ing eoutcuts of the mold will run out at the bottom
and leave a hollow casting.
I find these same features illustrated and de¬
scribed, and also claimed, in the Brunner patent
No. 95,015 of Oct. 12, 1S09. Brunner’s mold A is
of metal and he tells us it is cold. His mold is open
at the bottom B. It is lowered into a vessel contain-'
ing the melted material (which is spoken of as
“metal”). He says that the fluid material com¬
ing in contact with the cold mold will become
chilled to a certain extent, according to the time
the mold remains in the melted metal, forming a
thin shell. After the mold has been immersed a
sufhcionl length of time, it is drawn out, leaving the
material that has not become solidified to run back
into the vessel.
Broadly considered, tile only difference between 20
Brunner’s ai>xmratus and the apparatus of Miller
& Aylsworth is that Brunner employs a two-part
mold (which is necessary because his castings were
of irregular shape), whereas Miller & Aylsworth
employ a unitary mold (because their casting is a
cylindrical article wlueli can be withdrawn from
such a mold). This difference, however, is abso¬
lutely immaterial for the reasons already stated, in¬
cluding the extract from Judge Platt's opinion
found on page 814 of 135 Federal Beporter. 30
Broadly considered, there is no difference be¬
tween the process of Brunner and the process of
Miller & Aylsworth. The process is the same wheth¬
er tlie mold he a unitary continuous mold or a two-
part one. The mold is taken cold aud the material
in molten condition, in each case; tlie cold mold is
immersed into the melted material which rises from
the bottom so as to completely fill the mold in each
case; the melted material chills aud solidifies upon 40
physical exhibit, a certified copy of the “File-Wrap¬
per and Contents” of the Joyce patent here in suit;
and it is noted that the said file-wrapper and con¬
tents down to and including; the Patent Oflice com¬
munication of Oct. lfi, 1902, formed an exhibit on
behalf of the comxdainaut National Phonograph
Compnuy in the suit against defendant in Connec¬
ticut based on the Edison patent No. 713,209, de¬
cided by Judge Platt, whose Opinion is reported in 10
135 Fed. Rep., S10. The rest of the File-Wrapper
and Contents are now presented in a separate certi¬
fied typewritten. copy, as a physical exhibit.
The witness Classic is now offered for cross-exam¬
ination at a date to be agreed upon by counsel be¬
tween tlie respective parties.
Defendant's counsel produces two volumes con¬
taining the printed “Transcript of Bccord,” con¬
sisting of tlie pleadings, testimony and exhibits in
tlie suit based on Edison patent No. 713,209, en¬
titled tlie National Phonograph Company vs. Amer¬
ican 'Graphophonc Company; and requests. that tlie
same he marked for identification as “Defendant’s
Exhibit, Transcript in Connecticut Suit on Edison
Pressing Process.”
Defendant’s counsel likewise produces two vol¬
umes containing tlie printed Transcript of Record,
the same being the pleadings, testimony and ex¬
hibits in the companion suit to the above, based 30
on Edison patent No. 007,002, entitled the National
Phonograph Company vs. American Graphophonc
Company; nud requests' that these volumes, be.
marked for identification as “Defendant’s Exhibit,
Transcript in Connecticut Suit on Edison Casting
Process.”
Adjourned subject to notice.
New York, January 15, 1908.
Met pursuant to agreement at the oflice of Philip 40
0. A. Ij. Mamie.
Mauro, Esq., 154 Nassau Street, New York City, at
Present :
LTuhiiriit IT. Dykh, Esq., for Complainant;
llAi.i-u L. Scott, Esq., representing
Pun-il* JIauiio, Esq., for Defendant
By JIr. DYKE :
It is noted with respect to the stipulation
made at the close of the last session, that cer¬
tain of the exhibits, patents, and books referred
to therein are not set up in the Answer. By en¬
tering into this stipulation, counsel for com¬
plainant does not wish that he be understood
as assenting to the introduction in evidence of
tile various patents and books referred to in
the answer to Q. G, but desires to be understood
only as assenting to the statements contained
in the stipulation if it be held by the Court that
the said patents and books referred to in the
answer to Q. G, are competent evidence.
Counsel for complainants objects to question
G and the answer thereto, and the introduction
in evidence of the exhibits termed “Defendant’s
Exhibits, Scientific American Cyclopedia of
1S93;” “Grove & Thorp of 1895;” “Soap & Can-
. dies of 1890;’’ “British Patent to Field & Hurn-
frey of 185G;” “Cowles Patent, No. 8G059;-’
“Bingham Patent No. 1S2,547;” “Bingham Pat¬
ent No. 419,914;” “Fournier Patent, No. 545,
35G,” on the ground that none of them is set up
m defendant’s Answer in the Joyce suit, and
complainants’ counsel further gives notice that
a motion will be brought as soon as possible to
. have question 0 and its answer stricken out,
and the exhibits referred to excluded from the
record.
Defendant’s counsel replies that the statutes
and practice do not require that every patent
or other exhibit presented in evidence must first
he pleaded in the Answer; and defendant now
G. A. h. Mamie.
gives notice that if complainants bring the mo¬
tion just referred to, defendant will bring a
motion returnable at the same return day, for
leave to amend the Answer in the suit on the
Joyce patent by inserting in paragraph 8 there¬
of, such of the references above referred to by
complainants’ counsel, ns it may appear to de¬
fendant necessary or desirable to insert in the
Answer.
x-Q. 23. . Have yon ever before testified as a pat¬
ent expert in a patent case?
A. I have not. But I have occasionally given
affidavits in patent cases, as a patent expert. And
I have also quite frequently given expert opinions
touching novelty or infringements of patents, at the
request of clients.
x-Q. 24. You arc the same C. A. L. Massie who
is of counsel in each of the three cases in which
this testimony is being taken, are you not?
A. At the end of the first paragraph of my an¬
swer to Q. 1, 1 stated that I lmd been of counsel for
the defendant in nearly all of its patent suits during
the past ton years. I am one of the solicitors for
defendant in the suit on the Miller & Aylsworth
Process patent, and in the suit on the Aylsworth &
Miller Apparatus patent. I am of counsel for de¬
fendant in all three of the suits here consolidated,
but I cannot say at the moment whether I am one
of the solicitors in the Joyce suit.
x-Q. 25. You cross-examined witness Holden,
who gave an export deposition in behalf of com¬
plainant in the suit on the Joyce patent, did you
not?
A. I did. I believe I appeared for defendant at
the examination of all of complainant’s prima facie
witnesses in the Joyce suit, and conducted the cross-
examinations.
x-Q. 2G. I understand, then, that at least, so far
286 C. A. L. Husxic.
as the Joyce suit is concerned, yon stand in a dual
position of giving an expert deposition, which is
substantially an answer to an expert deposition of
which you conducted the cross-examination, is that
correct?
A. If your question means to assert that I have
been of counsel for defendant in the Joyce suit, nnd,
as such, cross-examined complainant’s primn facie
witnesses, and am now on the stand as an expert
witness for defendant, you are correct. Whether
or not my direct deposition is “substantially an
answer” to Mr. Holden’s deposition, is scarcely a
matter of testimony. I will state, however, that in
giving my deposition I was not consciously attempt¬
ing to “answer” Mr. Holden’s deposition.
x-Q. 27. In your direct deposition you state that
you were assistant Examiner in the U. S. Patent
Office for nearly four years. Did you examine the
talking-machine art in that capacity?
A. I did not. Sly acquaintance with the talking
machine art began in January, 1898, almost imme¬
diately’. after I left the Patent Office and became
associated with Mr. Slauro.
x-Q. 2S. In your answer to Q. 4 you speak of the
practice in vogue since the “early 90’s” in the mak¬
ing of blank cylinders for use on talking-machines.
I understand that you were not then speaking from
anything in your own experience?
A. So far as anything prior to 1898 is concerned,
I was not.
In view of the preceding answers complain¬
ant’s counsel objects to the second paragraph
of the answer to direct question 4 as hearsay
and incompetent.
x-Q. 29. Near the end of the next to the last
paragraph of your answer to Q. 4, you speak of
“melted wax.” Please define what you mean by this
term.
V. A . It. Maxsie. 287
A. By “wax,” I mean the wax-like composition
commonly employed for making sound-records,
which in general terms contains free stearic acid, a
smaller amount of stearic acid that has been sapon¬
ified by sal-soda or caustic soda, or both, a slight
amount of some form of aluminum, and a' hydrocar¬
bon wax such as paraffine or ccrosin.
By the use of tile word “melted” in the passage
you inquire of, I intended to refer to the melting-
point of the wax composition. Of course when the
composition has become liquid it is “melted wax;”
but it might be heated much higher and still he
“melted wax.” What I meant to say was that in
defendant’s process the mold is raised to a tem¬
perature far above the melting-point of the wax.
In my opinion, the simple expression “melted
wax,” without any further explanation, means wax
at substantially its melting point.
x-Q. 30. Your answer does not seem consistent.
I ask you, then, if you had a vat of wax whose
melting-point is, say 250° to 2S0°, and the vat and
its contents were raised to a temperature of say
400°, would or would not the vat contain “melted
A. As you regard my previous answer as “in¬
consistent,” I shall have to answer not merely in the
affirmative, but add an explanation.
The vat you inquire of would contain “melted
wax.” But the vat would also contain melted wax
when the wax was only about 280° in temperature.
If, dealing with a wax composition having a melting
point of somewhere between 250° nnd 280°, I were
asked to fill the vat with the melted wax, and no
further instructions were given, I would fulfil the
requirement by having the wax in the vat at the
temperature indicated, namely, somewhere around
10
30
288 0. A. L. Mumc.
melted or liquid condition. And unless some further
instruction were given, it would be volunteered
and superfluous to raise the temperature of the
wax substantially beyond its melting-point.
x-Q. 31. In the same portion of your testimony
you say, “defendant’s process consists emphatically
in subsequently raising the temperature of the mold
until it becomes heated far above the temperature
of melted wax.” In view of the response by the wit¬
ness Macdonald to x-Q. 43, 1 ask you what is meant,
in your testimony above quoted, by "defendant’s
process”?
A. By “defendant’s process” I menn, and in an¬
swer to Q. 4 I meant, having the wnx at a tempera¬
ture of about 400° F., in a large tank beneath which
heat was applied ; in submerging a solid-bottomed
cylindrical record-mold, at normal room tempera¬
ture, into the mass of the very hot molten wnx; per¬
mitting the mold to remain submerged and in con¬
tact with the superheated wax, until the mold was
raised to the same temperature ns the wax, some
150° above the melting point of the wax; in then
withdrawing the mold from the vat and plunging
it at once into cold water, where it remained until
the wax had become solidified and the “casting”
had been formed ; and in subsequently removing the
mold with its solid casting from the cold water; and
Anally scraping out the interior of the casting, sub¬
jecting it to cold air to lower it to normal tempera¬
ture, and “finishing” the cast duplicate.
I also had in mind the process, which in prin¬
ciple is the same, where a jacketed mold is em¬
ployed, and steam is introduced into the space
around the mold and enclosed by the jacket, either
simultaneously with, or before, or after, the intro¬
duction of the wax, whereby the temperature of the
mold and its contents is maintained for a con¬
siderable time; and subsequently the introduction
C. A. L. il lassie. 289
of cold water in place of the steam, whereby the
“casting” is chilled suddenly and symmetrically
from the exterior. With regard to the process just
described, I understand from Mr. Macdonald's tes¬
timony, that the particular apparatus employed —
the steam jacketed mold — was employed by him
about 1S90 and subsequently; and was discontinued
some years ago, — the largo vat containing a mass of
superheated “wax” being used instead. 10
In a general sense I regard these two methods of
manipulation as “defendant’s process,” since both
have been employed by defendant, and since they
both make use of the same principle, namely, the
Kuporlicatmg of the wax and its mold, the maintain¬
ing of this high temperature, and the subsequent
positive application of cold to the exterior of the
cylindrical mold and its contents. But, inasmuch
as defendant discarded the use of the steam-jack- 20
cted mold many year's ago, I am willing for the pur¬
pose of this cross-examination, to consider as “de¬
fendant’s process” the carrying out of the prin¬
ciples just stated by means of the large vat and the
mold without any steam jacket.
x-Q. 32. What are the difficulties to which you
refer in your answer to Q. 5?
A. I assume you are inquiring about the “diffi¬
culties” named in the beginning of that answer. 30
What I had in mind was the presence of air bubbles
upon or against the matrix surface, which arc liable
to bo entrapped there by molted wax. When this
occurs, the resultant casting will present cavities
upon its surface, which render the article practi¬
cally worthless as a sound-record. I also had in
mind, but to a less degree, the fact that there might
be present in the casting certain impurities that
would be either destroyed or driven off if the tem¬
perature of the wax, after it has been introduced 40
290 0. A. h. Mussio.
into the mold, should he raised materially, and
maintained. This tcmpcrnturc-trcntmcnt will like¬
wise eliminate the air huhhlcs referred to. I may
add that I understand from conversation with those
skilled in this art, and from the reading of the
depositions of various experts connected with com¬
plainant, that another difficulty frequently encount¬
ered by beginners in the molding of duplicate sound-
10 records, is the liability of the casting to chip or
crack.
Prom the study of the testimony of various ex¬
pert witnesses for complainants, and from my peru-
al of the decision by Judge Pi, att, already referred
to by me (135 P. I?.), I understand that complain¬
ants remove these difficulties or overcome them by
introducing their melted wax upward from the bot¬
tom of a mold that is either open-ended or has a large
20 hole for the purpose; and that complainants have
never made use of the process as described in the
J oyce patent in suit. This confirms me in the state¬
ment I made in the beginning of my answer to
Q. 5, namely, that Joyce had no idea of the diffi¬
culties to be met with; that is, because the Joyce
process, as described in the Joyce patent, docs not
prevent or overcome these difficulties.
x-Q. 33. In the fifth paragraph of your answer I
observe the following language: “The teaching of
3Q the (Joyce) patent is that the wax must not be su¬
perheated.” Please point out any such tonching in
this patent.
A. Pirst, at the bottom of page 1, the pntent
says:
“The mold * • * is heated, preferably, to
near the temperature of melted wax.”
As stated by me in answer to x-Q. 29-30, I under¬
stand this to mean that the mold is heated to a
40 temperature preferably uear (that is, about ) the
0. A. L. Massic. 291
melting-point of the particular wax composition to
be employed. And I agree with Mr. Macdonald that
this means a temperature a little below the tempera¬
ture indicated.
Second, Claims 3, 4, and G in suit say that the
“fused wax-like material” is at “substantially the
same temperature as the mold.” Now, ns the mold
is at about the temperature of the melting-point of jq
the wax; and ns the wax is at “substantially the
same temperature,” this must mean that the wax is
at about (slightly over, I daresay), its melting-
point.
In further corroboration of the first part of my
answer I note, first, that the passage in line 103 of
page 1 does not say “the temperature of the melted
wax,” which might, and possibly would, mean some¬
thing different from what the patent actually says.
But, since the patent gives not a syllable of state- 20
inent as to raising the temperature of the wax sub¬
stantially (or even to any degree) above its melting-
point; since it merely says “the temperature of melt¬
ed wax,” the passage, either taken by itself or in
connection witli the entire Specification, can refer
only to the melting-point of the wax. As an analo¬
gous expression, I would refer to the temperature of
melted ice, which I think would be understood as
meaning somewhere around 32°.
30
x-Q. 33. But are you not losing sight of the
• practical side of the matter. Suppose, then, that
you were engaged in making sound-records by pour¬
ing “melted wax” into a hot mold, and subsequently
cooling the mold, and thereafter removing the rec¬
ord. Remembering that Mr. Macdonald has testi¬
fied (x-Q. 51) that “the melting point of this mate¬
rial is rather vague as it goes from a solid to a semi-
plastic condition, gradually approaching a liquid
condition through a molasses-like, consistency,” at 40
292
0. A. Ij. Mamie.
what temperature would you consider it proper and
practical to maintain the wax in your kettle?
A. Frankly speaking, I do not believe the pro¬
cess that is set forth- in the Joyce patent in suit has
any practical side. And I am confirmed in my be¬
lief not only by the testimony given in this case by
Mr. Macdonald, but also by the very persuasive 'fnct
that complainant does not employ the process set
10 forth in the Joyce patent.
"With regard to the statement you have quoted
from Mr. MuciTonnld’s testimony, I had in mind the
fact that these wax compositions do not have a
sharp, well defined melting-point as is the case with
many definite chemical bodies; and therefore I used
such expressions as “substantially” anil “about” in
referring to the “melting-point,” — meaning thereby
a temperature at which the wax lias become tlior-
2o oughly molten or liquid.
If I should undertake to make cast duplicate
sound-records, I should undoubtedly avail myself
cither of the principle of superheating as developed
at defendant’s factory, and would maintain the wax
at a temperature of about 150° above (lie tempera¬
ture at which the wax becomes liquid, — or perhaps I
would avail myself of the manipulations, tempera-
tares, etc. employed at complainants’ factory, and
would heat the wax to a temperature of about 20
30 to 40° above what the Miller & Aylsworth patent
calls “its melting-point” (in line 23 of page 2), but
I would in this case be particular not to maintain
the mold within the vat more than the few -minutes
indicated, lest I should thereby re-melt the solidified
.v.l\ that laid accumulated upon the bore of my
mold.
By Mr. DYKE:
This answer is objected to as not responsive
40 to the question.
x-Q. 34. What I am trying to get at is this: If
you were engaged in pouring melted wax into a hot
mold (see line 104-10G, page 1 of Joyce patent),
would you attempt to pour it in its “molasses
form”? Or would you heat the wax until it had
become in a liquid condition which Mr. Macdonald
has stated in his answer above referred to as being
approached when the heating of the wax is con¬
tinued. 10
A. In answering your previous question I an¬
swered as I did because the question did not seem
limited to the “Joyce process.” In view of your ob¬
jection, I understand your question to be what I
would do in attempting to carry out the process that
is described in the Joyce patent in suit. I should
certainly, in that case, not undertake to pour out the
material while it was still in a viscous condition, but
would wait until it was liquid, so that it could be
readily poured. But neither would I undertake to 20
beat the wax to a temperature far and away above
a temperature suflicieut for me to pour it. I ob¬
serve that the Miller & Aylswortli patent in suit
teaches us that the ordinary commercial record-
composition now used, is sufficiently liquid to ilow
readily at a temperature only some 20° to 40° above
its “melting-point.” As compared with a tempera¬
ture of 120° to 150° above its melting-point, a tem¬
perature of 20 to 40° is comparatively a slight in¬
crease. So far as I am at present aware, a tempera- 30
turc of 5 or 0 degrees above the mean or average
temperature of. the wax in its “molasses-like” con¬
sistency, would lie sufficient to enable one to pour
the wax.
x-Q. 36. You will admit, of course, that it would
pour easier at a higher temperature than it would
at a lower temperature than that which you have
just indicated?
A. If by “injuring” you mean
the operation of 40
294
C. A.. L. Maggie.
discharging the contents of a pot or ladle into the
mold, certainly a material that is liquid will pour
easier than a material which is in a viscous condi¬
tion. Hut so far as such operation of pouring is
concerned, I do not believe that a wax composition
at a temperature 150° above its “melting point” will
“pour” out of a ladle into a mold any more readily
than tlie same composition at only a few degrees
above the temperature at which it lias become thor¬
oughly liquid throughout its entire mass.
I understand that there is no well defined sharp¬
ly-indicated point at which a semi-viscous or vis-
cuous wax composition such as we are dealing with
here becomes on the instant thoroughly' and com¬
pletely liquid. Hut, as soon as the material has be¬
come thoroughly liquid, additional heating from
then on will not enable us to “pour” it any more
readily.
It is also conceivable, and quite possible, that
super-heating to a substantial degree may so affect
the particles of the material as to increase its capa¬
city for entering into the infinitesimally minute ir¬
regularities of tlie matrix surface. In short, it is
conceivable and possible that snper-lieating as prac¬
ticed by defendant may result in tlie production of
a truer, and therefore a better, cast duplicate sound-
record. But the Joyce patent in suit docs
not even hint at any such advantage, and
therefore tlie Joyce patent does not (even indirect¬
ly) teacli us to heat our wax substantially above
the temperature at which it becomes melted.
Adjourned subject to notice.
New Tonic, January IT, 1908.
Met pursuant to agreement at 2 p. m.
Present:
Frank L. Dyer, Esq., for complainants.
x-Q. 30. Having reference to tlie numerous pat¬
ents and publications referred to by yrou in your
direct examination, do you find any one of them dis¬
closing the suggestion of casting a cylindrical ob¬
ject in a continuous mold, and then after tlie ma¬
terial lias set, and while it is still in the mold,
in reaming out its interior, so that the mold serves
the double function of defining the exterior surface
of the object, and also of acting as a chuck for
rigidly grasping the object during the reaming oper-
10
Objected to as immaterial.
A. I have not observed in any of the references
cited by' me any such description.
x-Q. 37. The statement contained in my last
question is descriptive of operations that are com- 20
mon to the jn-ocess disclosed in the Aylsworth &
Miller patent No. GS3,G15, in suit, as well as to the
process practiced by defendant, is it not?
A. That is not correct. In the first place, where
your previous question speaks of “casting a cylindri¬
cal object in a continuous mold,” I do not think
these words are properly' descriptive of the process
disclosed in the Ay'Isworth & Miller patent inquired
of. I mean by that, that it one were directed to
carry out the casting process using fusible material
and a cylindrical mold, I do not think it would occur
to him to carry out the particular manipulations
employed as described in the Aylsworth & Miller
patent.
In the second place, it appears from the testi¬
mony given on January 3, 1908, by Mr. Macdonald,
that defendant does not ream out the interior of
its cast duplicates before removing them from their
molds, hut merely scrapes them out and suhse- 40
290 C. A. L. i lassie.
qucntly performs (lie reaming operation after the
duplicate lias been removed from the mold.
However, regarded as a sweeping proposition, it
is true in general terms that the Aylsworth & Miller
patent describes the reaming out of the solidified de¬
posit that you speak of as a casting, while the same
is still held in its matrix; and that in defendant’s
process the interior of the casting is scraped out to
10 produce concentric rings while it is still in its mold.
x-Q. 3S. I understand, then, tjiat in a broad or
general sense, you do not make any' distinction be¬
tween the reaming operation suggested in the Miller
& Aylsworth process patent, and the scraping oper¬
ation performed by defendant, or in other words,
you admit that in both instances while the soliditied,
hollow cylindrical object is still retained in the
mold, an operation is performed on its interior by
20 . which excess material is removed, and concentric
rings are formed?
A. In a broad and general sense, yes. The dis¬
tinction I had in mind, in not answering absolutely
and without any qualification is that the operation
of .the Aylsworth & Miller patent is the complete op¬
eration of “finishing;” whereas the operation per¬
formed in defendant’s process, before removing the
duplicate from its mold, is only preliminary, and is
not the “finishing.”
30 x-Q. 39. With the operation performed by defen¬
dant there is at least a preliminary finishing, is there
not; tlntt is to say, the record is finished so far ns the
space which exists between the rings is concerned,
and also so for os the edges of the rings?
A. I will not commit myself ns to whether or
not it could be called a “preliminary finishing.” But,
ns I understand the question, j>on are correct.
x-Q. 40. That is to say, the record is partially fin-
islicd on its interior while still in the mold in dc-
40 fendant’s process?
A. I am not prepared to consider anything as
“partially finished,” though I do not say that the
idea is inconceivable. But certainly the interior of
the record has been acted upon by an implement
which, I understand, defines the spaces between
what we have been calling the concentric rings, —
and all this before removing the casting from its
mold. The subsequent “finishing,” I understand,
consists of removing the circular faces of the rims,
and in trimming the ends or the hollow cylindrical
casting.
x-Q. 41. You do not pretend to assert, do you,
that after the record is removed from the mold in
defendant’s process any operation is performed on
the material which exists, between the rings, or oil
the sides of the rings themselves other than their
interior faces?
A. I do not. My answers were based upon Mr.
Macdonald's answers to Q. 5 and to x-Qs. 4T and 48. ;
But I think I should call attention to the stipulation
given in the suits on the Miller & Aylsworth pat¬
ents, where a statement is made that seems to indi¬
cate that all the operations of “finishing” except the
cutting off of the ends of the casting are performed
before the removal from the mold.
x-Q. 42. Are you able to state how much material
is removed in defendant’s process in trimming off
the inner faces of the rings which are formed while ,
the record is still in the mold?
A. I have seen the operation performed several
times, but I did not observe particularly how much
material was removed, and I could not undertake to
answer your question off hand.
x-Q. 43. The purpose of this subsequent step is,
as I understand it, to slightly trim off the rings so
that they will fit the mandrel of the phonograph or
gniphophouc, is this correct?
A. That is correct. 4
298 C. A. Ij. Musuic.
x-Q. 44. If the phonograph or grapliophonc were
provided with n mandrel which would be fitted by
the rings as formed in the record while still in the
mold, you would admit, I suppose, that the sub¬
sequent operation of trimming off the rings would
not he necessary?
A. If tlie duplicate as it exists in the mold bc-
fore any reaming operation whatever should fit the
mandrel of the machine, there would he no need for
taking any further steps to make it fit. In the same
way, if the “reaming” should produce a fit, there
would be no need of further treatment to make a fit.
hut it is quite conceivable thnt after the casting
has stood for a day or so, removed from its mold, it
may no longer tit aceurately upon the mandrel of the
machine, so that subsequent treatment would be
necessary.
20 X'Q- ‘fo- You have appeared as counsel and have
examined and cross-examined experts in many pat¬
ent suits, have you not?
0. A. h. Musaie.
299
questions categorically when such an answer is ap¬
propriate?
A. I would prefer to do so, when in my opinion
such answer is appropriate, hut if, in my opinion,
merely to answer categorically a question would not
present the facts in what I believe to he the proper
light, I shall endeavor do u.qo sufficient words to
make nij' belief plain.
x-Q. 4S. Having reference to the doubt expressed
by you in answer to x-Q. 44, you are aware of the
fact, are you not, that in carrying out of the Miller
& Aylswortli process by complainant the interior
of the record is subjected to a single reaming opera¬
tion?
A. I so understand the description given in the
patents in suit.
x-Q. 49. Referring now to x-Q. 38, and assuming
that the expression “casting a cylindrical object in
a continuous mold” is comprehensive enough to in¬
clude any process for forming or producing such an
object either by introducing molten material over
the top of the mold, or introducing molten material
from the bottom of the mold, would the statement
as so considered define an operation which is to be
found in any of the numerous patents and publica¬
tions referred to by you in your direct examination ?
The question is objected to as immaterial.
30
A. It would not.
x-Q. 50. And such an operation as so defined
would be descriptive of the operations described in
the process patent in suit to Miller & Aylswortli, and
iu defendant’s process, assuming that the reaming
operation includes cither a complete finishing of the
interior of the record as well as a partial finishing
thereof as practiced, by defendant? ,
A. As thus broadly stated by you, and with the
assumptions given, my answer is in the affirmative. 40
x-Q. 51. Tlmt is to sn,y, aside from tlie question
whether or not .the Claims involved define it, there
is a common generic statement of operation which
applies both to the Hiller & A.ylsworth process and
to the defendant’s process? •
A. Defendant carries out a process involving the
employment of a hollow cylindrical mold and molten
wax-like miiteriai, and the two patents in suit de¬
scribe the use of such implements. Defendant ob¬
tains by these implements a duplicate sound-record,
a casting; and the patents describe tbe production
of a duplicate sound-record by the two implements
named, which I am willing to call a casting. Defen¬
dant’s process, and the description of the patents,
involves the removal of the material from the inter¬
ior of the casting while it is still within the mold
and comparatively soft. In this sense I answer your
question in the nlltrmative.
x-Q. 52. And in the same sense you admit that
the operations as broadly set forth by you in the
preceding answer, were, to the best of your knowl¬
edge, novel with Hiller & Aylswortb?
A. To the best of my present knowledge the Mil¬
ler & Aylswortb patents contain the first disclosure
of utilising the mold as a chuck for rotating the cast
duplicate, so as to remove material from its interior
before the casting has been withdrawn.
x-Q. 53. You are aware of the fact, are j’ou not,
that in the two suits which were tried before Judge
Platt on certain Edison patents, the alleged in¬
fringing operations of defendant involved the cast¬
ing of a spiral rib on the interior of the record, and
did not involve the performance of any operation
on the boro of the record while the latter was still in
the mold; and that the adoption by the defendant of
its specific process, ns now practiced by it, was sub¬
sequent to its commercial use of the process involved
in those suits?
A. In examing the proofs in the Connecticut
suits, I did not have that point in mind, but I think
it quite likely that in December, 1901, and Decem¬
ber, 1902 (the dates of filing those two suits), de¬
fendant was producing cast duplicates having a
spiral rib formed by a core, and was not making use
of an implement for removing tlie material from the
Imre (subsequent to the casting operation) in order
to produce ribs. 10
If I am correct, it is also true that defendant
adopted tlie specific form of process established in
these cases subsequent to the use of the specific form
of process established in the Connecticut cases.
x-Q. 54. Do you have any doubt as to the correct¬
ness of the statements given in my last question?
A. I do know that about 1901, defendant was
making cast cylinder records having an internal
spiral rib formed thereon by casting. I also know
as a fact that defendant is now forming its internal 20
ribs by removing tlie material with an implement,
subsequent to tbe act of casting. But I do not know
when tlie change was made. And I do not care to
commit myself to tbe statement that this change
was made subsequent to the taking of the proofs in
the Connecticut cases. With this explanation I will
say that I have ho reason to doubt the correctness
of your statement in x-Q. 53.
x-Q. 55. Is it your understanding of .the present ,.q
suits so far ns the Hiller & Aylswortb patents are °
concerned, that the .complainant assorts any such
interpretation of those patents ns would include the
first process practiced by defendant which was held
by Judge Platt not to infringe tlie Edison patents?
A. Your question seems to me to be somewhat
“involved.” It also seems to ask me. ns a witness to
state what views of complainant’s mental attitude
are held by defendant’s counsel. If you ask whether
defendant regards complainants as attempting, by 10
302
C. A. h. Mimic.
tho Miller & Aylswortli patents, to enjoin the precise
identical method employed by defendant in carrying
out its process which Judge Platt passed upon, I
would say that with respect to Claim 5 of the Ayls-
wortli & Miller Apparatus pntent at least, I do not
find this Claim to contain any statement about
reaming out the interior of the casting before re¬
moval from the matrix.
If by your question you mean to assert that the
gist of the alleged infringement complained of in
the present suits on the Aylswortli & Miller and Mil¬
ler & Aylswortli patents consists of reaming the
casting while still in the matrix, and in producing
concentric rings instead of a spiral ring, I will say
that with such assumption, ami with my under¬
standing of tlie particular methods employed by de¬
fendant, as made out in the Connecticut sails, — that
the two Miller & Aylswortli suits are not intended
to include the first specific form of process practiced
by defendant, which was held by Judge Platt not
to infringe the Edison patents.
x-Q. 50. Regarding the fifth claim of the Ayls-
worth & Miller apparatus pntent, you remember,
don’t you, that defendant’s practice of casting the
name of the record on the end simultaneously with
the formation of the record surface, succeeded the
process which was considered by Judge Plato?
A. I do not. I have no idea when defendant first
began to cast the name on the end of its cast rec¬
ords. It is quite possible, and for present purposes
I will lulimt, that tins feature Inis been introduced
subsequent to Judge Plato’s decision. I am also
satisfied that nothing, or at least very little, if any¬
thing, appeared in those Connecticut suits regard¬
ing this feature.
Having this feature— casting the name of selec¬
tion-included as part of your x-Q. 55, and with
the understanding just given, I will' say that if the
0. A. L. Mimic.
303
casting of the name be regarded, by complainant as
tlie gist of the infringement complained of under
Claim 5, that this idea was not involved in tlie suit
before Judge Platt.
x-Q. 57. Having reference now to the suit on tlie
Joyce patent, and referring to the numerous ex¬
amples given by you in which processes for making
candles are described, what was the object in those
processes of preheating tlie mold prior to tlie intro¬
duction of the molten material therein?
A. On page 2fiG of “Defendant’s Exhibit, Soaps
& Candles,” I learn that the object of boating tlie
mold and of subsequently applying cold water (the
two together, as T understand it, forming tlie com¬
plete process), is to produce “a polished appear¬
ance” to the surface of the cylindrical casting.
From “Defendant’s Exhibit, Field & Humfrey
British Patent of 1S5G,” I gather that tlie applica¬
tion of the cold water (which I have stated to form
a part of the process of first heating tlie mold and
subsequently, after filling, applying cold water), is
to prevent tlie formation of crystals.
I also understand that a molted wax (or wax-like
composition) when cast upon a hot metallic surface,
will come into more intimate contact throughout
the whole of such surface, than when cast upon a
cold metallic surface. Tlie foregoing statements
contain my understanding of the particular purpose
in view in the various references that deal specifi¬
cally with the making of cnndles.
With regard to the references that disclose the
manufacture of printers’ rollers, I understand that
tho same reasons exist, and aii additional one,
namely, that such rollers are comparatively long,
and the cylindrical molds nrc also comparatively
long; that the flowing of tlie material into such long
molds (and around a central core), would be inter-
304
C. A. L. Mosaic.
forcd with if the mpld mid core lie cold, liccauso in
the course of its (lowing into the hollow space, the
cold molds would chill the molten material nnd
cause it to become viscous, if not actually solid.
Hence the molds nnd cores are heated beforehand,
in order that the entire mold may he completely
filled with the liquid material.
x-Q. 58. One distinction that you point out be¬
tween the Miller & 'Aylsworth process and defend¬
ant’s .process, is that with 'former 'the mold is
dipped slowly and gently into the molten material,
which is not necessary with defendant’s process.
Would defendant’s process he altered if the mold
were dipped slowly and gently into the molten
material ?
A. If the molds used by defendant were lowered,
open-end upmost, into the vat containing super¬
heated wax, this lowering being done in a very
slow, gradual manner, it would not be wlmt de¬
fendant is now doing, lint I do not see any differ¬
ence in principle, except that such slow immersion
would be unnecessary, with defendant’s apparatus.
x-Q. 5!). By being the same in principle you
mean the same for all practical purposes?
A. I think so.
x-Q. GO. Now if defendant’s process be carried
out in this way which you say is the same in prin¬
ciple ns the process which it actually does perform,
before the wax enters the mold the' ’mold would be
heated. substantially to the temperature of the wax,
would it not?
A. When I said that the two proceedings would
be the same in principle, I did not mean to say that
whereas defendant now fills a cold mold, any filling
of a hot mold would be the same identical proceed¬
ing. Because we must not lose sight of the addi¬
tional facts that not only must the mold in defend¬
ant’s process be filled (whether hot, as suggested by
G. A. L. Massic.
you, or cohl ns in actual practice by defendant),
but the mold and the material must bo super-heated
and the super-heat maintained. So far as the mere
filling is concerned, I will answer your question in
the affirmative.
x-Q. Gl. Limiting yourself to the art of making
cylindrical phonograph records, do you find any dis¬
closure in any of the patents and publications re- •
ferred to in your direct examination of the process 10
in which molten material is cast in a mold, the tem¬
perature of the latter being approximately the same
as the temperature of the molten material?
A. To make my answer complete, I will refer,
for example, to the Young British patent as dis¬
cussed by Judge Platt in the opinion reported in
135 Fed. Rep., to the effect that Young teaches us
the use of a hot cylindrical mold having a reverse
sound-record upon its bore, which it is true was de¬
scribed by Young for use with celluloid, but which 20
could just as well have been used with a fusible
material.
I also refer to the work done at defendant’s fac¬
tory as pointed out by Judge Platt in the same
opinion, which I understand is likewise described in
certain exhibit depositions introduced into these
cases by defendant.
It is the fact that so far as I am at present in¬
formed, I do not find any single patent or puhlien- 30
tion prior to the filing of the Joyce pntent in suit
that discloses the production of a cast sound-
record by pouring molten wax-like material into a
hot mold. But I should add that the Joyce patent
in suit does not describe any snch process that can
be practically and commercially carried out.
Adjourned subject to notice.
New York, Jan. 20, 1008.
40
Re-direct examination, taken by consent of com-
306 0. A. L. Mosaic.
plimmnts counsel, in his absence, subject to
his right to outer objections and to re-cross
examine.
Re-direct examination.
Rd.Q. 02. In view of the objection entered after
x-Q. 28, please state your authorities for saying you
understand beginning at leant an carlg an the earig
10 ’ !)0’n phonogram blanks were made by casting, as al¬
ready described by you?
A. When I first bccnnic associated with Mr.
Mauro, in January, ISOS, 1 soon learned, as a matter
of general information, that, the blank cylinders or
phonogram blanks were formed by ensting the
melted wax-like material into hollow cylindrical
molds provided with central cores; and that this
method had been practiced both by the American
Gruphophnne Co. and the Edison phonograph com-
20 panics since the early ’00’s. This was not a special
piece of information vouchsafed to me alone by one
or two persons only, hut was a matter of general
reputation, well known to all persons connected
with the talking-machine business.
Another source of my information is certain testi¬
mony for the New Jersey Patent Co. (one of the
complainants herein) in a patent suit now pending
in the Circuit Court of the United States for the
30 District of New Jersey, in which the present de¬
fendant’s selling agent is sued upon a certain patent
to J. W. Aylsworth (who is joint patentee with Mr.
Miller in two of the patents here in suit). In that
Aylsworth suit in New Jersey, many witnesses on
behalf of said complainant have testified to the
eil'ect that in the carlg ’HO’n defendant, ns well as the
Edison companies, was making cast blank cylinders
for sound-records, and in fact that the Edison com¬
panies began this operation even earlier.
40 In the Edison deposition (given Oct. 9, 1903, in
O. A. L. Massic.
the Connecticut suit) in evidence heroin, beginning
at direct question 51, Mr. Edison testified that the
molding of phonogram blanks began with the idea of
making the blank entirely of one material, which
was patented to him by U. S. Letters Patent No.
3S2,4G2. That patent is dated May S, 1888.
In the same Connecticut suit (on Edison patent '
No. 713,209) Mr. Frank L. Dyer (who is complain¬
ants’ counsel herein) appeared ns expert for the 10
complainant, and on June 25, 1903, in answering
my cross-questioning, admitted in substance that
“for the last ten years or more” phonogram blanks
have been made by ensting a molten material in a
cylindrical mold and withdrawing the blanks after
radial shrinkage. Mr. Dyer added that the mold
was continuous (and not sectional), and that the
castings were withdrawn from the blanks by direct
longitudinal movement.
In Judge Platt’s opinion in 135 Fed. Rep., so 20
often referred to, I find many statements to the ef¬
fect that this process of producing blanks had been
practiced by both complainant and defendant for
many years before the dates of filing the Edison
patents there in suit,
Rd.Q. G3. I will ask you to compare the process
of the Joyce Claims (involved in this suit) with
that of tlie Claims of the Edison patent No. 713,209
declared on in the Connecticut. suit before Judge 30
Platt, and incidentally with- defendant’s process?
A. The suit referred to was on Edison patent
No. 713,209, granted Nov. 11, 1902; and the Claims
declared on were Claims 2 and 3 thereof. On June
24, 1903, Mr. Frank L. Dyer, of counsel for com¬
plainants herein, having testified as an expert for
the complainant therein, was cross-examined by my¬
self. He was comparing the subject-matter of
Claims 2 and 3 of said Edison patent then in suit,
among other things, with the application for the 40
...
C. A. L. Mastic.
Joyce patent here sued on. I find on printed pages
38-9 of the Transcript of that suit, the following
testimony by Mr. Dyer:
“Still another interference was declared be¬
tween the application for the patent in suit
[Edison 713,209] and an application of Maur¬
ice Joyce, who described the identical opera-
jq tioiia performed by defendant except the single
step of superheating the material. In other
words, Joyce made a matrix by covering a mas¬
ter with graphite and electroplating thereon,
and lie secured duplicates from such a matrix
by easting molten material i herein, and finally
he removed the duplicate by radial shrinkage.
The two processes [Joyce’s and that of Edison
713,209] were regarded by the Patent Office as
practically identical, and no question was ever
raised by Joyce to the contrary, notwithstand¬
ing the fact that under the rules of the Patent
20 Office ample opportunity is offered for dissolv¬
ing interferences where no interference in fact
exists.”
(Italics and matter in brackets mine.)
Again, in answer to my x-Q. 27, Mr. Dyer snid
that Joyce —
“described the exact process used by defend¬
ant except the specific step of superheating the
material to eliminate air bubbles.” (Italics
The same Mr. Prank L. Dyer also testified as an
expert witness for complainant in rebuttal in the
same suit. On April 22, 1904, in answer to direct
question 102, he discussed the Maurice Joyce Appli¬
cation filed Oct. 13, 1897, and bearing the Serial
No. G55, 027, —being the application which eventu¬
ated into the Joyce pntent here in suit. Mr. Dyer
stated that on June 10, 1902, Joyce presented a
claim corresponding With the second claim of the
aforesaid Edison patent No. 713,209, then in suit.
Mr. Dyer noted that the Interference involved the
O. A. L. Massie.
second and third claims of the Edison patent then
in suit; and that the process of the said Edison
Claims 2 and 3 was not limited to pressing a blank
but included the casting with melted material; and
that the Interference was decided in Edison’s favor
and against Joyce. In answer to x-Q. 129, Mr. Dyer
said Joyce filed a concession of priority in favor of
Edison.
Mr. Mauro has pointed out the result of the Con¬
necticut litigation upon said Claims 2 and 3 of said
Edison patent No. 713,209.
Prom the foregoing examination it will he ob¬
served: First , that Claims 2 and 3 of the said
Edison patent No. 713,209, cannot be enforced
against tliis defendant. Second , that Joyce is not
entitled to assert any' claim superior to, or commen¬
surate with, said Edison Claims 2 and 3. Third, 2n
the process set forth by the Joyce Claims in suit,
differs from the process set forth in said Edison
Claims 2 and 3 solely by reason of the heating of
the Joyce mold, which I have already quoted Mr.
Dyer, as meaning “preheating” (in my answer to
Q. 9). And, Fourth, that defendant’s process
(botli then and now) differs from the process set
forth by Joyce in that Joyce pre-heats and does not
super-heat, while defendant does not pre-lieat and
docs super-heat. I may add, as Fifth, that the two
differ csscntialy in that defendant’s process is op-
porative and highly successful, while the Joyce
“process” is inoperative and unsuccessful, and has
not gone into use.
In short, to sum up, we may assume the process
set forth in Claims 2 and 3 of the said Edison pat¬
ent No. 713,209 as tile basis or “starting-point,”
from which to reckon. Defendant’s process was
adjudged by Judge Platt to differ therefrom, be¬
cause (among other things) of the super-heating,
310
C. A. L. .Uasaic.
which is still the characteristic feature of defend¬
ant’s process; while the Joyce process differs
therefrom by pre-heating but not super-heating.
That is, defendant departs from the “common start¬
ing-point” in one direction, while the Joyce process
• departs therefrom in another and different re¬
spect.
Bd-Q. G4. Please compare the production, by
means of the hollow cylindrical record-mold, of
duplicate sound-records, by (a) pouring into the
mold a melted composition of wax-li \l;e material, or
(b) by inserting into the mold a hollow cylinder of
tile same material in a comparatively solid consist¬
ency, and heating the same (without melting) and
applying pressure, or (c) by inserting a celluloid
shell into the mold and heating and expanding the
same, in view of the same Mr. Dyer’s testimony in
said Connecticut suit?
A. In the said deposition, in answer to my
x-Q. 23, Mr. Dyer stated that the Edison applica¬
tion (for the said Edison patent No. 713,209) was
placed in Interference with a certain Lambert
patent; subsequently with a certain Capps appli¬
cation; and still later on with the Joyce applica¬
tion (now the Joyce patent in suit).
Begarding the Lambert patent Mr. Dyer said:
30 “The matrix was formed exactly like those
of defendant by coating an originnl master
with graphite and electroplating thereon, and
• . . celluloid duplicates were secured
from such a matrix by first [inserting a cellu¬
loid tube into the matrix and then] softening
a [the] celluloid tube with a solvent and ex¬
panding the same by steam pressure.” (Mat¬
ter in brackets mine.) And that nil the tri¬
bunals of the Patent Office refused to dissolve
40 this Interference (involving, as it did, Lam-
O. A. L. Massie.
311
bert’s celluloid scheme and Edison’s use of a
solid wax-composition.
The Capps process, Mr. Dyer testified, employed
a celluloid tube in a matrix, and the celluloid was
expanded by the evaporation of a solid, and the
Capps Interference was not dissolved.
In the Joyce process, as we know, the molten or
liquid wax was poured into the cylindrical matrix. 1Q
In answer to x-Q. 23 Mr. Dyer showed that the
Joyce process of pouring the melted material into
the mold was regarded by the Patent Office, by Mr.
Joyce, by Mr. Edison, and by himself “as patcut-
ahly identical ” with the Edison process of insert¬
ing a “blank or cylinder, in a relatively solid state.”
In answer to x-Q. 27 Mr. Dyer testified that the
Patent Office decided that the Edison process of
wanning the solid blank (and pressing it while
plastic but still solid) was “pateutably allied” with 20
a casting process like Joyce’s.
After Mr. Dyer had admitted that where the Edi¬
son patent No. 713,209 speaks of “impressing” upon
“blanks” it meant specifically pressing the wax¬
like cylinder existing in a comparatively solid state
(us distinguished from being liquid or molten)
agaiust the matrix, — in x-Q. 29 he said this language
of the Edison patent was likewise applicable to the
Joyce process where the composition was melted gQ
and poured into the mold ; and that the Patent Office
had sustained this view.
I will quote my cross question 50, put to Mr.
Dyer:
“50 x-Q. You have stated on more than one .
occasion that the process, or rather step, of
melting the record material and pouring it into
the mold while in a liquid state so as to form
the phonogram by casting, is the equivalent of 40
those steps of the preferred process [of the Edi¬
son patent No. 713,209] which consist of taking
an ordinary blank and inserting it in the mold
and subsequently expanding it by heat or pres¬
sure or both. AVhat is your authority' for this
statement? I understand that the [Edison]
patent in suit makes no such disclosure in its
terms.” (Matter in brackets mine).
10
Mr. Dyer’s answer begins:
“If X were not capable of forming an inde¬
pendent judgment on this question, I should
say that my authority was the expert’s in the
Patent Office, who declared an interference be¬
tween Edison and Joyce and thereby held that
one process was the equivalent of the other. I
do not, however, need any special authority for
20 the support of my opinion other than ordinary
familiarity with mechanical matters in gen¬
eral » » * »
And Mr. Dyer proceeds to give his reasons very
clearly, saying that if the two operations inquired
of should be more closely allied than they were,
“they would be mechanically identical.’
In answer to x-Q. 51 Mr. Dyer admitted that gen¬
erally speaking he should say that when Edison-
30 by the Edison patent No. 713,209, which Mr. Joyce
has admitted to be an anticipation of his own
(Joyce’s) invention, and which the Court has held
not infringed by defendant— had once disclosed to
. the public his process of making duplicates by
means of inserting a blank and expanding the same
(while yet of a compartively solid consistency) by
mechanical pressure, then,— “the possibility of cast¬
ing them would be obvious”; especially, as Mr. Dyer
pointed out in answer to x-Q. 52, since the casting of
40 duplicates was known to the public through the
C. A. Jj. Hassle.
313
medium of Edison’s prior patent No. 484, 5S2 (the
“split mold patent” ) .
Again, the said Edison patent No. 713,209, (there
in suit) enumerated as the material of the dupli¬
cate “phonogram” not only the ordinary wax-like
compositions but also celluloid and similar ma¬
terials. And in answer to my x-Qs. 70-77-78, Mr.
Dyer admitted that celluloid was “plastic” for the
purpose of taking impressions from the mold and 10
that his term “plastic” correctly described and in¬
cluded the ordinary wax-like cylinder-composition
ns well as celluloid and similar substances, with
which the process of said Edison patent might be
carried out.
Prom the foregoing review of Mr. Dyer’s expert
testimony, it will be perceived, First, that Mr.
Joyce, Mr. Edison, Mr. Dyer, and the Patent Office
believed and usserted that the formation of cast
duplicates by pouring a liquid wax-like composition
into the mold, was the mechanical equivalent of
forming a duplicate by expanding within the mold
a warm yet solid hollow cylinder of the same com¬
position, and that the former was obvious after the
latter became known. Briefly, pressing with solid
wax is equivalent to ousting with melted wax.
Second, that complainant’s counsel and expert
(Mr. Dyer) and the Patent Office agree that the
formation of uulluloid duplicates, by inserting a hoi- 8q
low shell of celluloid into the matrix and then heat¬
ing and expanding it by .pressure, is the mechani¬
cal equivalent of the above pressing process of the
Edison patent. Briefly, pressing with solid wax is
equivalent to pressing with softened celluloid,
And, Third, since “things equal to the same tliiug
are equal to each other,” that pressing with soft¬
ened celluloid, is equivalent to casting with melted
Itd-Q.C5. Please apply the information you 40
314
A . h. Massie.
have gathered from Mr. Dyer’s deposition, to the
process of the Young Itritish Patent; and compare
the same with the process of the Joyce Claims in
A. The Young Itritish Patent discloses the same
hollow cylindrical record mold that Joyce describes.
Young directs the preheating of this mold, and so
does Joyce. Young then directs the insertion of
the celluloid shell, and .makes use of the heat al¬
ready imparted to the mold for heating and soft¬
ening the celluloid’; whereas Joyce makes use of
what is the “mechanical equivalent,” namely: the-
pouring into the same heated mold of the incited
composition. Finally, Young directs the collapsing
of his celluloid duplicate in order to withdraw it;
whereas Joyce avails himself of the greater shrink¬
age of the composition he is dealing with, in order
to withdraw the casting, — -which (as Judge Platt
has already adjudicated) is an obvious expedient
with such materials.
In short, the process of the Joyce Claims in suit
is substantially the same as that of Young; because
it diiTers therefrom solely by employing what com¬
plainant’s counsel has admitted to be a mechanical
equivalent, resulting in what Judge Platt calls au
obvious modification of a subsequent manipulation.
ltd-Q. GO. Deferring to x-Qs. 3G and 49, 1 will ask
if you find any Claim here in suit that covers the
idea of utilising the mold not only for outlining the
exterior of the casting, but also ns a chuck? And
also do you find any Claim here in suit that covers
the idea of reaming out the interior of the duplicate
of sound-record before the latter has ever been re¬
moved from its mold. And, Anally, do you find any
Claim here in suit that covers the production of con-
centric ribs upon the interior of the sound-record,
whether by reaming or. otherwise?
A. I do not. There is no such Claim in suit.
G. A. L. Massie.
3 IS
Of course some of the Claims include one or more
of the ideas inquired of. but along with other fea¬
tures not employed by defendant. In answering
this question it is not necessary to refer to the Joyce
potent, which makes no mention of reaming out the
interior. In the Miller & Aylswortli process patent,
Claims 3 and 4 recite, ns one of the steps of the
process, the “finishing the bore of the duplicate”;
and thereafter recites, as a subsequent step, 10
“separating the duplicate from the matrix.” Thus
only by implication is flic idea inquired of in your
question to be found jn these two Claims, lint ns
pointed out in my direct examination, these Claims,
3 and 4, recite three steps as constituting the pro¬
cess; and since defendant does not employ the first
step, defendant docs not employ the process of
Clnims 3 and 4.
The same remarks apply to Claim 5 of the Mil-
ler & Aylswortli process patent, except that this
Claim expressly directs us to finish the bore of the
duplicate “before the latter has become hard.” So
far as this specific recital is concerned, ;I find the .
same idea in the Edison patents No. 393, 4G2 and
No. 393,403, already made exhibits herein, viz., that
the phonogram blank ,is to lie heated so as to make
it comparatively soft for the action of the reaming
tool.
Of the Aylswortli & Miller apparatus patent, 30 •
Claim 5 contains no mention of reaming or the use
of the chuck. Hut Clnims G and T do recite, but ns
one clement of an alleged “combination” of two ele¬
ments, means for reaming the interior of tiie dupli¬
cate while tlie latter is still held by the mold, Claim
7 specifying that the means employed will produce
the concentric ribs. Hut since these two Clnims
call for nil alleged “combination,” and since defend¬
ant (for reasons pointed out in my direct examina¬
tion) does not employ the first one of tlie two elc- 40
318
C. A. 1 1. Alamo.
munis of the alleged combination of Claims 6 and 7,
defendant does not employ the alleged “combina¬
tion” in its entirety.
To make my answer to your question more posi¬
tive, I say that, for the reasons just pointed out,
the particular feature or idea which was inquired
of in x-Qs. 30 and 49, and which feature or idea
complainants’ counsel seems to have settled upon
as being one of the two features or ideas that are
common to the defendant’s process ami apparatus
on the one hand and those of the Jliller & Aylswortli
and Aylswortli & Jliller patents on the other hand,
me not claimed in either of the said patents; they
are merely implied in some Claims, and included iu
others as elements of an alleged “combination.”
Rd-Q. 07. What have you to say regarding the
novelty or obviousness of reaming out the interior
of the casting before it has been removed from its
mold?
A. I will recall first that the reaming out of the
interior of phonogram blanks was old and well-
known, and lias been described in various early Edi¬
son patents. Second, tbc production of a phono¬
gram blank having an internal spiral rib formed
by casting is the specitic disclosure of the Edison
patent -N o. 44 4,701 ; but the same Edison patent like¬
wise discloses internal ribs in general , which I un¬
derstand to include concentric ribs, which (for the
reasons pointed out) could only be made by ream¬
ing, and could not be made by casting. Therefore,
in view of the Edison patent No. 414,701, there
w„ld lie no novelty or ingenuity required in pro¬
ducing a phonogram cylinder having internal com-
ceil trio ribs formed by ream ing.
In the third place, if one wishes to produce inter¬
nal concentric ribs, he must do so by reaming; and
lie would preferably do so while his material is com¬
paratively soft. And this last idea is fully disclosed
C. A. L. Massie.
317
in the two Edison patents No. 393,402 and No. 393,-
403 referred to.
The proposition, then, comes down to something
like this: We have before us a cast cylindrical -
sound-record within whose bore we desire to pro¬
duce concentric ribs (an old feature) by reaming
( the only conceivable method ) ; and we have already
been taught that the material should lie warm and j0
comparatively soft for satisfactory reaming. Now,
then, shall we wait until this casting becomes cold,
and then rc-hcat it to ream it out; or shall we take ■
advantage of its present warm and comparatively
soft condition, and ream it immediately?
In my opinion there is. only one answer to this:
It would be perfectly obvious to any intelligent me¬
chanic that he could at once, as soon as his casting
had become “set,” and while it is still comparatively
soft, and before waiting until he had chilled it down 20
so as to remove it from his mold, — I say, that it
would be perfectly obvious to him that he coilid
at once proceed to ream out its interior. And I
believe that all persons having in mind the state
of the art as above set forth by me, will agree with
this view.
I would refer here to what I understand to lie the
regular practice in all well regulated kitchens,
namely, that the pots and pans that have been used ^
are cleaned out at once, while the utensils them¬
selves and the grease, etc., are still warm and the
latter comparatively soft and easy to remove. I
do not think any one would regard it ns a pnten't-
ablc invention in some cooking-school expert who
undertook to teach us that we must clean out our
pots and pans while they are still warm and the
contents still soft, instead of waiting until all had
gotten cold.
In fine, so long as spiral ribs were desired, they 40
could bo Hindu (nml were made) during the process
of .costing the cylinder. As soon ns concentric ribs
were desired, ns (bey could not be produced by cast¬
ing, they would lmve to lie produced by reaming, —
■ and such reaming would naturally be performed
while the material of the casting is still warm, and
still in the mold.
Hd-Q. OS. Do you find in the prior art, and par-
10 ticulnrly in the talking-machine art, any disclosure
of the production of a duplicate by means of a hol¬
low cylindrical record-matrix, and the subsequent
' application of mechanical treatment to the interior
of such article, while the latter is yet warm and
before it lias been removed from its mold or matrix?
A. The aforesaid Edison patent No. 713,200, de¬
scribes, and in Pig. 2' illustrates, the production of a
duplicate sound-record 11, by means of the record
matrix A. While T! is still within A, and is warm
20 and comparatively soft, the mandrel C is employed
for shaping the interior of the duplicate Tt. This
Edison application was filed March 5, ISOS.
In “Defendant’s Exhibit, Lioret Patent So.
528,273” (granted Oct. -30, 1S0-1), among other
tilings, I note — referring, for instance, to Pig. S —
that the duplicate sound-record c, lias been pro¬
duced within the cylindrical record-surface «1, and
that, while the duplicate c is still warm, and coin-
3Q pnrntivcly soft, and is still retained within its
matrix, the tapered mandrel </2 is forced downward
to shape the interior bore of the duplicate record.
I also refer to Lambert patent No. (1-15,020, granted
March 20, 1000 (which, -by the way, is the patent
whose application was in interference with the Edi¬
son application for the Edison patent No. 713,200,
as stated in iny examination of Mr. Dyer’s former
testimony). In this patent the duplicate sound-rec¬
ord is formed within a cylindrical electroplate mat-
40 rix, and while still held within its matrix, and still
319
C. A. h. Mamie.
comparatively soft, pressure is applied to the in¬
terior of the said duplicate sound-records.
I likewise refer to the Joyce patent here in suit.
Joyce’s cast duplicate L is formed within his con¬
tinuous cylindrical mold 11, and while still warm,
comparatively solid, and not yet withdrawn from
the matrix, its interior is acted upon by the taper¬
ing core.
Ed-Q. 09. Deferring to x-Qs. 55 and 50, do you
find any Claim in suit that covers the feature of
those questions?
A. I do not. Claim 5 of the Ayisworth & Mil¬
ler Apparatus Patent is the only Claim in suit that
mentions or refers to the idea of casting the name
of the particular selection simultaneously with the
formation of the casting. And Claim 5 recites this
only as one element — and a secondary element at
that — in a combination comprising three other ele¬
ments, none of which defendant uses. And, since
defendant docs not use the three principal elements
of this Claim 5, defendant does not use the “com¬
bination” recited by tiie Claim.
Considering this Claim 5 together witii my pre¬
vious answer, it is the fact that the only two fea¬
tures or ideas that complainants’ counsel lias point¬
ed out as common to defendant’s process and appar¬
atus on the one hand, and those of the two Miller
& Ayisworth patents on the other, — are features for
which neither patent lias any Claim.
Ild-Q. 70. What can you say as to the novelty of
this feature of casting the name simultaneously
with forming the duplicate?
A. It is absolutely without novelty, for the rea¬
sons stated in my answer to Q. 20. In making metal
castings, it lias for years been the common practice
to cast thereon, simultaneously, the name of the
maker, patent-markings, etc.
320
C. A. L. Massie.
Marlin Shannon.
lld-Q. 71. Compare the process claimed by the
Joyce patent in suit with the process ns carried out
by defendant and the modification of defendant's
process suggested by complni mints’ counsel in x-Qs.
58-GO, namely, that the mold be inserted slowly.
A. Defendant’s actual practice submerges the
void mold, in a Imp-hazard- fashion, into the s« per¬
il ailed material. The first result of this is merely
10 to fill tiic mold, hut it is filled with superheated ma¬
terial; and tile next result is not only to heat the
mold but to heat it to a temperature far above the
melting-point of the wax. And, finally, this tein- '
perature is maintained for some minutes, and air-
bubbles, etc., eliminated.
The modification suggested by complainants’
counsel — the only change being to lower the mold
gradually and slowly — would result in having the
2q mold heated before any of the melted wax enters
the mold. So that the first result is to Till a healed
mold, hut it would he filled with superheated ma¬
terial; and as the next result there follows, just
as in the practice actually carried out by defen¬
dant, the heating of the mold to a temperature far
above the melting-point of the material, and the
elimination of air-bubbles.
According to the Joyce “process,” the mold is
preheated to a temperature very nearly that of the
30 melting-point of the wax, so that the first result
of pouring the melted wax, which is at very little
above its melting-point, is to fill a heated mold.
But it is not filled with superheated material. Con¬
sequently, there is no superheating of the mold.
Superheating, ns so often pointed out, is one of the
tilings that distinguishes this process from the
Joyce patent. I again cnll attention to Mr. F. L.
Dyer’s former testimony', which I have quoted,
namely : That the Joyce “process” differs, from do-
40 fondant’s in not superheating. Also, there is no
direction by' Joyce to maintain the heat. Conse¬
quently air-bubbles are not eliminated by Joyce.
To sum up: If defendant’s process be modified ns
suggested, so as to be specifically different from the
practice as actually carried out by defendant, the
modified -process would still differ from the Joyce
process in the two essential respects in which de¬
fendant’s actual process differs from the Joyce pro- 1Q
cess. Joyce dcpnrts from what I have spoken of
ns “the common basis” (of the process of Claims
2 and 3 of the Edison patent No. 713,200) in pre¬
heating liis mold, although Joyce does not super¬
heat it. Defendant’s actual process and the modifi¬
cation suggested by complainants’ counsel, both of
them, depart from the aforesaid “common basis”
(of Edison) by superheating, and by maintaining
the heat.
Defendant’s counsel offers in evidence Edi-
son patent No. 713,209, dated Nov. 11, 1902, as
“Defendant’s Exhibit, Edison Patent No. 713,-
209.”
Defendant’s counsel has already marked for
identification the transcript of record and ex¬
hibits in the Connecticut suit, and especially
calls attention to the Dyer deposition therein,
referred to by the witness Massie.
No re-cross examination. 30
Signature of witness and certificate of magis¬
trate waived.
Defendant closes its proofs in each of the
three cases.
Martin Shannon.
Martin Shannon.
Complainant's Rebuttal Proofs.
IN THE UNITED STATES CIRCUIT COURT.
Southern District of West Virginia.
National Phonograph Co., )
(in Equity, on Miller
10 **■ )& Aylsivortii I’ateiit
l No. 0S3,G15.
, Amebioan Graphopiione Co. ]
National Phonograph Co.,)
(Ill Equity, on Ayls-
i’S. ) worth & Miller
(Patent No. (!S3,(iTfi.
American Grapiiophone Co. )
2o New Jersey Patent Co., V'
vs )Tn Equity, on Joyce
(Patent No. 831,0(18.
American Graphopiione Co.)
Further testimony in Rebuttal taken pursuant to
notice at the ollico of Frank L. Dyer, Orange, New
Jersey, March 4, 1!)0S, at 11 A. M., before Alphons
Westee, Notary Public of New Jersey, Special E\<
30 nmincr by consent.
Present :
Frank L. Dyer, Esq., and Heriiert H. Dyke,
on behalf of complainants.
C. A. L. Massie, Esq., on liclinlf of defendant.
Deposition of Martin Shannon.
MARTIN SHANNON, a witness produced on be-
'40 half of complainants, being duly sworn, deposes and
says in answer to question propounded by Mr. Dyke,
as follows:
Q. 1. Please state your name, ago, residence, and
occupation? .
A. Martin Shannon; age, 40; reside IT Bab¬
cock Place, West Orange, N. J.; occupation, fore¬
man of Master Molding Department of the
National Phonograph Company.
By Mr. Massie:
The informal notice over the telephone
and the letter which we accepted in lieu
of the formal notice named Mr. Browne,
the .expert, as the witness to lie examined. De¬
fendant’s counsel will waive any objection to
the examination of this witness or any other
witness produced other than Mr. Browne pro¬
vided that if further time he desired by defend¬
ant for cross-examining such witnesses, the
same will be granted by complainants.
By Mr. Dyke:
Complainants’ counsel will, of course, give
such reasonable time as may be necessary for
purposes of cross-examination, granting to
defendant’s counsel the same right he would
have if advised of the taking of the pres¬
ent testimony by formal notice. Counsel
for complainants states that it was his purpose
to proceed this morning with the examination
of Mr. Browne, but ns Mr. Browne is not pres¬
ent and Mr. Massie is, the taking of the pres¬
ent testimony was regarded as nn accommoda¬
tion to defendant’s counsel.
Q. 2. Mr. Shannon, what is the work on which
you are engaged as foreman of the Master Molding
Department?
324
C. A. L. Maasio.
A. I have charge of the making of the master
molds. While I don’t have charge of making the
molds, I make the masters from the mold.
Q. 3. Please explain how these masters are made
from the master molds in your department?
A. I produce three metal parts. This is the core
( indicating) ; it is first heated, after it is hot enough
the mold (the second of the parts produced) is
placed upon the core, and the cap (the third piece
referred to) is placed on top of the ,inold, then the
three pieces are set in a gas furnace and heated until
it is hot enough so that it will simmer by touch of a
wet finger applied to the exterior of the mold. These
parts are then taken out of the oven by a wire hook
inserted through the opening in the top of the core,
then placed on a table and now filled with wax, the
temperature of which is 375° P. The ivax is poured
in with a coffee pot or other vessel having a spout.
The filled mold is then taken and chilled by setting
it in a tank containing water; the water comes up
close to the joint between the mold and the cap. It
remains in the water until the wax has congealed
so it is safe to take out without the wax running. It
is then placed, still upright, in a rcvolvnhlo chuck.
The base is secured in this chuck by means of a
thumb screw. Then the cap is first scraped on the
inside with a thin knife which loosens the wax from
3Q the cap. Then the cap is taken oil, which leaves the
wax projecting from the top of the mold and around
the top of the core, it (the wax) is then cut off
square with the top of the mold by mentis of a knife,
the chuck being rotated during this operation. Then
the mold is taken right off of the core, a slight twist
may be given. The casting leaves the core and
comes up with the mold. Then the mold with the
casting therein is plnccd on a reaming machine, and
the inside reamed to a taper; the mold still contain-
40 ing the casting is placed upon a hollow metal shell
Martin Shannon. 325
which fits the interior of the casting; a water jacket
is set upon the outside of the mold, encircling it,
and cold water is circulated through the jacket, un¬
til the master leaves the mold. The mold is then
lifted up, leaving the record on the shell and the
record remains there until it is cold. This might
be from a half hour to an hour and a half. I have
referred to the record in this answer sometimes as
the casting and sometimes as the master. 10
Q. 4. How long have you been foreman of the
Master Molding Department?
A. I can’t tell exactly, it will be, I believe, some¬
time in last August I took charge of it, but I worked
on it previous to having charge of it.
Q. 5. How long have 3’ou been engaged in' this
work in any capacity?
A. Three years or over.
Q. 6. How long, if you know, lias the method
which you have described of making molded masters 20
been in use in the department of which you are now
foreman?
A. Three years or over.
Direct examination closed.
Fiy Mr. Massie:
x-Q. 7. What is a master record, that is, what is
it used for?
A. It is used to make molds from.
x-Q. 8. I understand the practice of the National
Phonograph Company is first an original sound-
record is made upon the phonograph, as by a band
playing or a singer singing a song; then a mold is
made from that original record ; then your master
records are cast from that first mold; and then fur¬
ther molds are produced upon those master records;
and finally your commercial sound-records are
made from those second molds. Is that correct?
A. Yes.
x-Q. 9. Have you any idea of the temperature to 40
llillllii
■»-> _ :
Marlin Shu
which the molds are raised in the gas oven?
A. No, I have not.
x-Q. 10. I understand that you use the wet fin¬
ger test and do not employ a thermometer.
A. Yes, sir.
x-Q. 11. How many persons are engaged in the
master molding work?
A. Eight, seven beside myself.
x-Q. 12. How many of these handle the heating
of tlie mold?
A. Two.
x-Q. 13. Is the wax you employ in making the
master records the same that is used for making
the commercial records you put on sale?
A. I couldn’t say.
x-Q. 14. Do you know what the material is that
you call wax?
x-Q. 15. Do you, in the conduct of your depart¬
ment, have to make requisitions from time to time
for this wax; or does some other department keep
you supplied without any request coming from you?
A. I send a man after it.
x-Q. 16. What do j’on instruct this man to ask
for, and if you know, what does 1m ask for?
A. Master wax.
x-Q. 17. And I understand that you do not
30 know what this wax is?
A. No, sir.
x-Q. 18. Are you at all familiar with the appear¬
ance of the wax of the ordinary Edison molded
records on the market?
A. No, I am not, I never take much notice of it.
x-Q. 19. So far as the mere looks go, what dif¬
ferences, if any, are there between the master record
made in your department, and the ordinary Edison
molded record on the market?
40 A. That I don’t know, they are a larger record.
Martin .Shannon.
327
The master record is a larger record than the reg¬
ular. I mean that the outside is the same, but the
master record has a thicker wall and it has a smooth
tapered bore, there is more wax in it than in . the
regular record.
x-Q. 20. I do not care now about the size or
shape of the two articles, but would like to know
nbout the appearance of the wax of which they are
made. Is there auy difference so far as you know,. 10
in the wax of a master record and the wax of a
regular Edison record?
A. Not that I know of.
x-Q. 21. I suppose that the temperature to which
the master wax is raised, namely 370° F., is not
measured by a thermometer every time you pour
wax, but that thermometer readings are taken from
time to time, so as to guide you in the general run
of your operations?
A. Yes, that is right. 20
x-Q. 22. Do you know about at what tempera¬
ture the master wax melts?
A. It will melt at 18O°-190°, or probably less
than that.
x-Q. 23. Is there auy regular practice in your
department with regard to the number of masters
you make from auy particular mold; or do you
have to get particular instructions in regard to
A. I have an order to go by.
x-Q. 24. After you have placed your mold con¬
taining the casting within the water, and when
the cooling has proceeded so far that the master
shrinks away from, the mold, exactly ko\y do. you
remove the mold from the master?
A. We raise the molds straight up.
By Mr. Dyke:
' The mold referred to by the witness, com¬
prising the three detachable parts described, is 40
328 Marlin Shannon.
introduced in evidence and marked “Complain¬
ant’s Exhibit Commercial Joyce Apparatus.”
By Mr. Massie :
The exhibit is objected to as irrelevant and
immaterial and the designation given it is ob¬
jected to as misleading, since the same does
not appear to be a “commercial” mold, but a
10 mold for master records, and no basis is laid
for using in connection with it the name
“Joyce.”
Stipulation.
It is stipulated and agreed between counsel that
unless otherwise requested in particular cases,
every exhibit introduced may remain in possession
of counsel introducing it, subject to production
2Q upon reasonable request.
Signature and certificate waived.
March 5, 1908.
The witness MAETIN SHANNON, on behalf of
complainants, is recalled.
Ed-Q. 25. Mr. Shannon, when you were testify¬
ing yesterday, Mr. Massie aslced you the following
question :
30 x-Q. 22. “Do you know at about what tem¬
perature the master wax melts?”
and you replied to that question :
“It will melt at 180°-190°, or probably less
than that.”
do you wish to make any correction to that an¬
swer?
A. It was 290° that I meant. It will stay at
a melted liquid at 290°.
Ee-cross examination by Mr. Massie:
40 Es-Q. 20. Who called your attention to the fact
Martin Shannon.
•that you had made the mistake of saying 180°-190°?
A. That gentleman over here (indicating Mr.
Dyke).
Ex-Q. 27. Were you surprised that you had
made the mistake, or were you under the impression
that your first answer wus correct?
A. I supposed it was 290° that I said, instead of
190°.
Bx-Q. 28. Have you, since you gave your testi- 10
mony yesterday, made any thermometer readings
of the temperature at which this wax becomes
liquid?
A. None but with my regular wax as I work
daily.
Ex-Q. 29. Have you, either yesterday or today,
observed by the thermometer the temperature at
which your regular wax becomes liquid?
A. Nothing but merely in the kettle that I used.
x-Q. 30. Is that a fact that neither yesterday or
today, in the kettle that you used, you have taken
a thermometer reading to find out about what tem¬
perature your wax first becomes liquid?
A. No, sir.
x-Q. 31. Have you, either yesterday or' today,
found out by a thermometer the temperature at
which you wax becomes solid?
A. No, sir.
Ex-Q. 32. When Mr. Dyke, ' here present, spoke 3Q
to you about the mistake in your answer, did you
uot suggest that you should inquire of Mr. Dodd
as to the temperature?
A. Yes, sir.
Ex-Q. 33. Why was this, did you not think you
knew it yourself already?
A. Well, the way I understood, or the way the
question was put by you, what the heat would it
take to melt solid wax.
Ex-Q. 34. What is the heat that will take to 40
melt the solid wax?
Marlin Shi
331
over liere this morning, did I not tell you that you
had testified yesterday that the master wax melts at
180° to 190°, and ask you if that statement was
correct?
Objected to as leading.
A. Yes, sir.
Rd-Q. <15. And when you stated you would see
Mr. Dodd about it, did I not instruct you to go and
find out for yourself?
A. Yes, sir.
Rd-Q. 40. Did I not instruct you to go and find
out for yourself?
A. Yes.
Rd-Q. 47. But you did not do so?
A. No, because I knew 290° was right.
Rd-Q. 48. How do you melt your wax?
A. Melt it with a gas fire. 20
Rd-Q. 49. Do you fill the vessel with cold wax
and then apply beat and melt this wax?
A. Yes, sir, it has to be done that way.
Rd-Q. 50. When you do so, at what temperature
docs it melt?
A. At 290° it will melt, the wax will stay at
liquid at 290° on the thermometer.
Rd-Q. 51. You have, yourself, melted wax in this
way, and taken its. melting temperature with a
thermometer? 30
A. Yes, sir, but not very many times; it is al¬
ways prepared for us by the watchman.
Rd-Q. 52. When you did melt the wax in this
way, what the thermometer reading when it melted?
A. At 290° the most of it is melted, but there
inny be some bard lumps in it.
Rd-Q. 53. Is it your usual custom to melt your
master wax without any previously melted wax in
the kettle?
A. We clean it out once a week and start with 40
Question 1. Please state your name, age, resi¬
dence, and occupation?
A. Maurice Joyce; age, 70 years; occupa¬
tion, photo-engraver; residence, 922 M Street, N.
W., Washington, D. C.
Q. 2. Are you the snmc Maurice Joyce to whom
United States Patent No. 831,608, for Method of
Duplicating Phonograms, was granted on Sept. 25,
10 1906, upon an application filed Oct. 13, 1897, and
which is the patent in suit in the case of New Jersey
Pntent Co. vs. American Qraplioplione Co.?
A. I am.
Q. 3. Was, or was not, the application for this
patent founded upon actual work performed by
you?
By Mr. Cameron :
Question objected to ns leading.
By Mr. Dyke:
Question reformed as follows :
Q. 4. How did you come to make this applica¬
tion for patent?
A. Does it mean why I did it, or how I come to
do it. I don’t understand it.
Q. 5. I mean to inquire, Mr. Joyce, simply what
led you to the filing of this application.
80 A. What led me to file the application ; I made
the cylinders and they were successful and I filed
an application for patent.
Q. 6. When, to the best of your recollection, did
you first make these cylinders? Is there anything
in your recollection by which you can fix this time?
A. To the best of my knowledge nnd belief it
was some time between 1894 and the time of filing
the application. I made a change of my business
in May, 1894; now I may have commenced in 1894
40 and probably not until 1895 to experiment.
Maurice Joyce. 33 5
Q. 7. You are reasonably certain are you, then,
that you did this work during 1895?
By Mr. Cameron:
Question objected to as lending.
A. To the best of my knowledge nnd belief I be¬
lieve I started in 1895.
Q. 8. Did you produce any of the cylinders or
phonograms during 1895, so far as you can recol- 10
lect?
By Mr. Cameron:
Question objected to ns leading nnd notice is
given that if counsel persists in asking leading
questions of the witness, motion will he made
to strike the questions nnd answers from the
record.
A. I believe I did.
Q. 9. Explain the work which you did in as brief 20
terms as possible, beginning with its earliest form
and tracing its development?
A. I first made the copper mold, then nfter mak¬
ing the mold I made the records.
Q. 10. How did 3'ou make the mold?
A. By the electrotype process.
Q. 11. Please explain this process?
A. I got a wax cylinder nnd deposited copper
upon it.
Q. 12. How were you able to deposit copper up- 30
on a wax cylinder?
A. By suspending the cylinder in an electrotype
bath; that is, they call it a bath.
Q. 13. Was this cylinder when suspended in a
bath in the original form in which you got or pur¬
chased it?
A. I placed it in a suitable case or mold to sus¬
pend it in the copper solution.
Q. 14. Was the copper deposited immediately
upon the wax itself? 40
330
Maurice Joyce.
By Mr. Cameron:
Question objected to ns lending.
A. I coated the was cylinder with plumbngo.
Q. 15. Having formed your mold, explain the
next step of making the wax cylinder, confining
yourself to your earliest work?
10 A. After completing the mold I poured melted
wax into the mold.
Q. 16. How did you arrange the mold to receive
the wax?
A. I prepared a metal base to hold the mold.
Q. 17. Did the two pieces, the mold and base,
constitute the whole of your apparatus?
A. I inserted a core within the mold.
Q. 18. Have you now in your possession any
specimens of the apparatus which you used?
20 A. I have.
Q. 19. Can you produce any such specimens?
A. I have in my possession several molds and
herewith produce them, together with the bases and
one of the cores.
Q. 20. Were all the molds which you produced
made at the same time?
A. They were made at different times from dif¬
ferent record cylinders.
30 By Mr. Dyke:
The molds, bases and core produced by the
witness are introduced in evidence and marked
for identification, respectively: “Joyce Mold
No. 1,” “Joyce Mold No. 2,” “Joyce Mold No.
3,” “Joyce Base No. 1,” and "Joyce Base No.
2,” and “Joyce Core.”
Q. 21. Of the Molds Nos. 1, 2 and 3, was either
of these molds made at a different time from the
40; other?
Question objected t
□ess should be nsked
consideration were ma<
Complainants’ counsel stntes that the ques¬
tion was asked in the form given to it simply
to ascertain the relative and not the exact time
of making the molds.
_ Counsel for defendant insists upon the objpf-
tion and protests against the form of the ques-
. tion as it now appears that the same was inten¬
tionally leading.
A. They were.
Q. 22. Which was made first?
A. The mold marked “1” was made first.
Q. 23. What, if any, difference is there between
this mold and those made later?
A. Mold 1 is a blank ; the inside is blank. Molds
2 and 3 contain a record on the inside of each.
Q. 24. Mention any other differences which you
may note?
A. Well, I don’t know how to answer that.
Q. 25. Please compare the upper portion of Mold
No. 1 with the similar portions of Molds Nos. 2
and 3?
A. Mold No. 1 has a slightly flaring mouth. No.
2 and No. 3 have a larger flare mouth.
Q. 26. What is the purpose of this flaring
mouth?
A. To retain the melted wax.
Q. 27. When, as nearly as you can recollect, did
you make Molds 1, 2 and 3?
A. I can’t give the exact date, but it was some¬
time between the early part of 1895 and the date of
filing the application.
338 Maurice Joyce.
Q. 28. How long, if you can remember, did you
make Molds 2 and 3, or other molds similar to them,
before filing the application?
By Mr. Cameron:
Question objected to until it nppears of rec¬
ord that “other molds similar to them have been
made” or were made by the witness prior to
filing the application.
Q. 29. Embody with the answer to the previous
question an answer to the following: Are Molds
2 and 3 all of the molds of this kind which you
made?
By Mr. Cameron :
Question objected to as leading.
A. I made molds at different times. I innde
20 from ten to a dozen or more at different times. I
was making molds for over a year at different times;
a year, or more at different times before filing the
application.
Q. 30. Please assemble the mold, base and core
as you used them, and explain how you made the
record cylinders?
A. I place the core in the base, the bottom of the
core fitting in the central opening of the base. I
then place the mold around tire core with the bottom
80 of the mold fitting the slight cup-like depression in
the base. I took a saucepan and put cylinder wax
and melted it. I pnt the mold into a gas oven,
turned on the gas and heated the mold in the gas
oven. When the mold wns heated and in proper
condition, I took the melted wax and poured it into
the mold between the core nnd the mold. After the
wax had cooled X removed the core and then re¬
moved the cylinder from the mold.
Q. 31. Had you any way of telling how hot you
40 heated the mold?
339
Maurice Joyce.
A. As hot as I could get it. I sometimes put
the mold and the saucepan containing the wax into
the oven and heated them both together. After the
wax was sufficiently heated I took them both out
and poured the wax into the mold.
Q. 32. What do you mean by sufficiently melted?
A. When it was melted as hot ns I could get it,
so it would flow into the mold.
Q- 33. Did you always.lieat the mold? 10
A. Always.
Q. 34. I am referring to all your experiments
from the start to the finish?
A. When I first started I did not heat the mold.
Q. 35. What kind of results did you get with the
cold mold?
A. I got a defective or imperfect record.
Q. 36. Explain the nature of the imperfections
of the record so obtained?
A. The records so obtained were defective with 20
blisters and bubbles on the face of the cylinder.
Q. 37. Did the records made with the hot molds
have these imperfections?
By Mr. Cameron :
Question objected to as leading.
A. The first records I made had some.
Q. 38. How was it with the rest?
A. I concluded the trouble wns that the mold 30
was not sufficiently hot.
Q. 39. What did you then do?
A. I heated my mold still hotter. After the
first were imperfect I got the mold and wax the
same temperature by putting them both into the
oven and heating them together. The result wns a
perfect cylinder. I discovered that by having the
wax and the mold the same temperature there was
harmony between the wax nnd the mold and the re¬
sult was a perfect cylinder. 40
340 Maurice Joyce.
Q. 40. Explain about the congealing of this cy¬
linder and when it began?
A. I never timed the congealing, but it congealed
slowly.
Q. 41. Please explain further and state when
you first noticed the congealing after pouring the
wax under the conditions which you have named?
A. A few minutes after 'pouring the wax it con-
10 gcaled on the edge of the lip of the mold and on the
upper part of the core, and then there was a slight
shrinkage of the surplus wax within the lip. Then
sometimes I cooled the inside core.
Q. 42. Who, if any one, witnessed the work
which you did with these molds, and which you have
just described?
A. My son, Maurice E. Joyce.
Q. 43. Having made these record cylinders, what
did you do with them?
20 A. I put them on a graphophono and tested
them.
Q. 44. With what result?
A. Those that were satisfactory I retained, and
if I found any one not satisfactory I threw it aside.
Q. 45. Did you manufacture successfully any
considerable number of molded record cylinders in
this way?
Maurice Joyce. 841
Q. 47. By whom?
A. By some of the employes. The last one I had
tested was tested by their manager.
Q. 48. Do you know his name?
A. I forget his name; but he pronounced them
perfect records.
Q. 49. Did you have any conversation with him
respecting the records?
A. I am under the impression he told ine he 10
would like to submit that record to Mr. Easton.
Q. 50. What did you say to that?
A. I objected at the time. I told him I did not
care about submitting it at that time.
Q. 51. Were there any other persons to whom
you talked?
A. Yes; I borrowed a grapliopkone from Stilson
Hutchins. Before borrowing the grapliopkone
from Stilson Hutchins I had some records tested on
his grapliopkone. I talked with several persons as 20
to my experimental work; as to what I was working
Q. 52. Any one else connected with the Columbia
Phonograph Company?
By Mr. Cameron : .
The question objected to as leading.
By Mr. Cameron:
30 Question objected to as leading.
A. I should judge I made several dozen of them.
Q. 46. Did you do all of the testing of the records
yourself?
By Mr. Cameron :
Same objection.
A. When I first started I had no grnphophonc.
I took the records, several of them, to the Columbia
Phonograph Company, and had them tested on their
40 machines in their shops on Pennsylvania Avenue.
A. Oh, yes; with several of the salesmen I was
acquainted with. I used to buy wax from them,
and they knew I was experimenting in that direc¬
tion.
Q. 53. Did you have any conversation with any
of the officials of the Columbia Phonograph Com¬
pany?
By Mr. Cameron :
Counsel for defendant renews his objection to
the leading character of these questions and
specifically objects to the last question as
grossly leading in character and' renews his
Maurice Joyce.
Recess.
Q. 57. Mr. Joyce, I hand you two papers and ask
you to explain what these papers are and what you
know about the matters treated of therein?
A. The paper signed “Robert Fletcher Rogers”
was in reply to a letter I wrote him, and acknowl¬
edges the receipt of a cylinder I sent him. The let¬
ter is as follows :
Roiieiit Fletcher Rogers,
Attorney at Law and
Counsellor in Patent Causes.
45 Broadway.
Cable Address : Boiuiogers.
New York, July 5th, 1898.
Maurice Joyce, Esq.,
No. 414 11th Street, N. W.,
Washington, D. C.
Dear Sir: —
I beg to acknowledge receipt of your favor of
29tli ultimo., which should have been acknowl¬
edged before, ns well as of a graphophone cylin¬
der received by express. I have been unable
to exhibit this as yet to the Graphophone Com¬
pany for the reason that Mr. Devine nnd others
have been absent from the city. I shall attend
to the matter with all possible speed and com¬
municate with you according to instructions.
Very truly yours,
( Signed) Roiieiit Fletcher Rogers.
The other paper is a letter signed by Mr. Easton
is one forwarded to me by Mr. Rogers. This letter
is as follows:
344 .Maurice Joyce.
Executive Offices
COLUMBIA PHONOGEAPH COMPANY
Sole Sales Agent for the American
Grapliophone Company.
Bowling Green Offices : 5, 7, 9 & 11 Broadway.
10 New Yoiik City, July 9th, 1898.
Mr. B. F. Eogers,
No. 45 Broadway,
New York, N. Y.
My Dear Sir: —
We were interested in the record submitted
by you to-day as coming from Mr. Joyce. Such
records would not be commercially saleable, be¬
cause of harshness and a tendency to run blind;
but if made from a permanent master capable
20 of refinement and improvement and of very
cheap and quick manufacture, Mr. Joyce -would
seem to be on the right track, and should be
encouraged to proceed with his work.
Yours truly,
(Signed) E. D. Easton,
President.
Dictated to and transcribed
from the new
Gkaphophone.
At the suggestion of Mr. Hutchins, who was inter-
30 ested in the thing, I forwarded this cylinder to Mr.
Eogers, in reply to his request for a cylinder. Mr.
Eogers wanted to submit it to the Columbia Grap-
hophone Company of New York. I received these
letters from Mr. Eogers.
By Mr. Dyke:
The letters referred to and spread at length
on the record in the preceding answer are in¬
troduced in evidenco and marked “Complain*
40 ants’ Exhibit, Bob'ert Fletcher Eogers’ Letter
Maurice Joyce.
to Joyce, July 5, 1898,” and “Complainants’
Exhibit, Easton’s Letter to Eogers, July 9,
The letters offered in evidence are objected
to at this time since the authenticity of the
same has not been properly proved. They are '
further objected to as immaterial and ir¬
relevant. They are further objected to as only
embodying a fragment of the correspondence of
which they purport to be a part, and the re¬
maining parts of this correspondence are or
were in the possession of the witness and re¬
main unaccounted for.
It is hereby stipulated between the respective
parties to this suit that the three molds, two
bases, the core, and the two letters offered in
evidence in connection with the testimony of
this witness may remain in the custody of the
complainants, subject to production at any time
upon reasonable notice.
Q. 58. Have you any further portions of this cor¬
respondence in your possession, to your knowledge?
A. I could not find any.
Q. 69. Did you endeavor to find it?
A. Yes. I searched for it, and was unable to
find any.
Q. 00. How did you forward the cylinder to Mr.
Eogers?
A. By express.
Q. 61. You wrote Mr. Eogers, I presume?
A. Yes.
Q. 02. Did you keep a copy of the letter?
340
Maurice 'Joyce.
A. I filed them with some other papers, nnd I
found them when I searched for them.
Q. 04. How was it that you came to preserve
these particular letters and apparently did not pre¬
serve the remainder of the correspondence?
A. I did not make a copy of any of my letters
forwarded to Mr. Rogers.
Q. 05. Hid you ever get the cylinder back from
10 Mr. Rogers?
A. No.
Q. GO. Where is that cylinder now if you know?
A. I believe that Mr. Rogers still has it in his
possession.
Direct examination closed.
Cross-examination of witness by Mr. Cameron:
2Q x-Q. G7. Sir. Joyce, I call your attention to the
mold nnd base No. 1, which has no record in reverse
on the interior of the mold. I take the core offered
here in evidence nnd insert it inside of the cylinder
with its smaller end downward, and ask you if when
you first tried to mold wax in this cylinder you used
it in the condition I now show it with the core in
position within the mold?
A. I did.
x-Q. G8. Please tell me the earliest date to which
30 you are willing to swear when yon used this mold
No. 1 in this position?
A. To the best of my knowledge and belief it
was from eighteen months to two years prior to
the filing of the application. I think I would be
justified in swearing to two years.
x-Q. 09. I have, no doubt, Mr. Joyce, of your en¬
tire caudor, but this is a matter that occurred a
good many years ago, and I again wish to ask you
ns to the earliest date to which you are willing to
40 make oath that you used this device; and in answer¬
ing the question please tell me how you fix the date,
if you can positively fix on any date?
. A. In May, 1894, I made a change in my busi¬
ness, and it was some time after that change that I
commenced on this record or cylinder.
x-Q. 70. Am I to understand from your answers
that you know it was after May, 1894, and prior to
Oct. 13, 1897, but that you cannot undertake to fix
the date any nearer than that? 10
By Mr. Dyke:
Question objected to as without foundation
in the testimony which this witness lias already
given, the witness having just testified that he
used Mold No. 1 in the manner described at
at least from eighteen to twenty-four months
prior to the filing of his application. This is
evidently an effort on the part of defendant’s
counsel to make an admission entirely in con¬
flict with what witness has heretofore stated, 20
since defendant’s counsel could not have un¬
derstood from the witness’ statements that the
witness cannot undertake to fix any date any
nearer than May, 1894, or October, 1897.
By Mr. Cameron :
Defendant’s counsel calls attention to the
fact that the statements contained in the pre¬
ceding objection by complainants’ counsel were
not in accord with the facts. The witness lias
not testified that he used the Mold No. 1 at “
least from eighteen to twenty-four months
prior to the filing of his application, hut merely
has expressed it as his “belief” that lie so used
it. Question 09 called for the earliest date
to which he was willing to make oath, and in
answer thereto the witness states that he
changed his business in 1S94 and that it was
some time after that change. Defendant’s
counsel insists that the question is not only a
proper one, but one that was designed to be
perfectly fair to the witness, who is certainly 40
348
Maurice Joyce.
able to state whether or not he can fix the
(late any nearer than he has done, and the
question is insisted upon.
By Mr. Dyke:
Coinplanants’ counsel states that if the ques¬
tion asked be construed to he merely the query
“Whether or not he can fix the date any nearer
than he lias done,” that it is certainly a proper
question, and that he has no objection thereto;
but Complainants’ counsel must insist upon
his objection to the question as originally put.
By Mr. Cameron:
Defendant’s counsel replies that the ques¬
tion as it stands on the record is the question
to which lie demands an answer to from the
witness.
20 By Mr. Dyke:
Former objection renewed.
A. My memory is had on dates; it never was
good on dates. I don’t know that I can fix the
exact date. The fact is that I experimented, and
it was sometimes over a week and sometimes over
a month before I took it up again. I know I was
some time working on the thing. I feel satisfied
it was over a year before I made application. I
30 fiud it right hard to go back and fix upon anything
that would remind me of the earliest time that I
started the thing, so as to swear to. the date.
x-Q. 71. Did you- purchase all of the wax that
you used in these experiments from the Columbia
Phonograph Company?
A. I purchased some and the young man there
gave me some broken cylinders; threw them in.
x-Q. 72. Did you purchase the first wax which
you used from the Columbia Phonograph Com-
40 pany?
Maurice Joyce.
A. I got it; I don’t know whether 1 purchased
it or not. I got some and purchased some. The
wax that I got was old broken records; all the wax
that I used was from Columbia records.
x-Q. 72. Are you willing to swear that the first
wax you obtained from the Columbia Phonograph
Co. was not ohtaiued in the Spring of 1897?
A. I cannot say.
x-Q. 73. I observe that the core which you say 10
you employed has a smooth exterior surface. I
call your attention to a picture showing a mold
with a smooth bore mounted on a base and having
an interior tapering core which core, however, has
a spiral groove formed thereon; and ask you if,
with the exception of the spiral groove, it is not
like the mold No. 1 with the core inserted therein?
A. I would say that this mold is in more than
one piece. The top is separate from the body part.
x-Q. 74. That is the only substantial difference 20
outside of the fact that the core has a spiral groove
on it, is it not?
A. It is different here; the base is different,
and the upper end is different. That I consider
an additional piece.
By Mr. Dyke:
The foregoing question, and any examina¬
tion along this general line, is objected to for 30
the reason that the witness has not qualified
as an expert skilled in the comparison of one
patent with another, or ns an expert skilled
in the reading of drawings. This witness was
offered purely ns a fact witness, and this testi¬
mony being out of the scope of the direct ex¬
amination is objected to as improper cross-
examination.
x-Q. 75. At the time you began your experiments
did you know it was old in the talking-machine art 40
- 7— - — — - - -
SHliSllSiS Wmm PPM is
850 Maurice Joyce.
to make a blank cylinder by pouring the molten
wax into a cylinder having a smooth interior sur¬
face, which cylinder is mounted oil a base support¬
ing a tapering core within the cylinder, and having
a flaring mouth part to readily conduct the molten
wax into the space between the core and the interior
face of the cylinder?
10 By Mr. Dyke :
Counsel for complainants feels that lie must
protest most strongly against this improper
effort to transform a witness simply to facts
as to what his own practice has been into an
expert witness who shall inform the court what
the art was prior to the doings of this witness.
The question is objected to as incompetent,
there being absolutely nothing on the record
to show that this w'itness is qualified to answer
such a question ; and it is further objected to
20 on the ground that it is not at all ivitliin the
scope of a proper cross-examination. Defend¬
ant’s counsel is notified that if he persists in
this line of questioning he will have made the
witness his own.
Maurice Joyce.
351
ground that. the question is entirely immaterial,
what this witness did being precisely the same
thing entirely irrespective of any information
he may have as to the prior state of the art.
Defendant’s counsel is asking a question which
can only properly be asked of an expert witness
introduced in his behalf.
A. I did not.
x-Q. 76. When you first began your experiments
I understand you to say that you employed a cold
mold, is that correct?
A. Yes.
x-Q. 77. And subsequently you adopted the prac¬
tice of heating the mold, did you not?
A. I did.
x-Q. 78. Please tell us what it was that led you
to try the use of a hot mold instead of a cold mold?
A. The results from the cold mold were not satis¬
factory.
x-Q. 79. Well, why did you then try a hot mold?
What led you to do this?
A. To see if I could get better results.
x-Q. 80. Had you learned that it was old in the
casting art in casting certain articles of wax to em¬
ploy a hot mold?
A. I had never seen it done.
By Mr. Cameron:
Question repeated.
By Mr. Dyke:
Same objection as to x-Q. 76. Complainants’
counsel must insist that in the direct examina¬
tion the witness was asked only what he had
done and not what information he had prev¬
iously obtained. The question is clearly with¬
out the scope of the direct examination.
352 Maurice Joyce.
A. I had rend about casting candles.
x-Q. 81. In hot molds?
A. I believe the molds were hot or warm.
x-Q. S2. Did you not say to me a few moments
ago that you rend in an encyclopedia about casting
caudles in hot molds?
A. Either hot or warm ; I can’t swenr that they
were hot; they were either hot or warm.
x-Q. 83. And this led you to the casting of your
wax in hot molds, did it not?
A. I had east a wax cylinder in a copper mold
years previous to that patent (indicating Edison
patent No. 114,701).
x-Q. 84. You are an electrotyper, are you not?
A. I am an electrotyper, an engraver, photo
engraver, stereotyper, and a printer.
x-Q. 85. And your business made yon more or
less familiar with the general art of casting, did it
not?
A. I am familiar with the art of casting stero-
types.
x-Q. SO. . And you knew that it was common prac¬
tice to cast various materials in a hot mold, did you
not?
A. I knew it was common practice to enst stere¬
otype plates in a hot mold.
x-Q. 87. Your invention ns I understand it con¬
sists in casting fused wax-like material into a hot
mold, the wax-like material and the mold being of
substantially the same temperature, cooling the
mold and contents so as to cause the material to
shrink away from the surface of the mold, and
then removing the casting, does it not?
By Mr. Dyke:
Complainants’ counsel again insists that this
witness was produced to testify to wliait he had
Maurice E. Joyce. 353
done and that the witness is not called upon
to define his invention. The witness is notified
that lus invention is defined in the claims
of his patent and he is instructed that lie need
not answer this question unless lie is ordered to
do so by the Court, upon proper application.
By Mr. Cameron:
The question is insisted upon.
By Mr. Dyke:
It is further objected that counsel for defen¬
dant in framing this question has included only
a portion of one of the claims of the patent,
as defining the invention, when as a matter
of law' the entire claim is necessary to define
any invention.
A. I refuse to answer this question. The speci¬
fication is sufficient. ,
x-Q. 88. Did you make this invention set out
in the specification?
A. I did.
x-Q. 89. Did you employ a hot mold?
A. I did.
x-Q. 90. Did you cast in said mold fused wax¬
like material?
A. I did.
x-Q. 91. . Was said material at substantially the
same temperature as the mold? 3
A. The mold aud material were both inserted
into a gas oven. They were kept there until the
wax was melted and were taken out and were both
of the same temperature to the best of my judg¬
ment.
x-Q. 92. Were the mold and contents cooled to
cause the material to shrink away from the sur¬
face of the mold?
A. I sometimes cooled the mold and sometimes
set the mold aside to cool of itself.
40
354
Maurice Joyce.
x-Q. 93. And did tliis cause the material to
shrink away from the surface of the mold?
A, The cooling did.
x-Q. 94. Was the result any different when you
employed a hot mold from what it was when you
employed a cold mold?
A. The results were different.
. x-Q. 95. You say you cast the record by. pouring
the molten wnx into the hot mold, then cooling the
mold to cause the material to shrink away from the
mold. What do you mean by “casting”?
A. It is hard for ine to define “casting” in the
absence of a dictionary.
x-Q. 9G. I did not ask you to deflne “casting”
hut what yon mean by casting?
A. Now in stereotyping we pour the metal into
the mold, we call that “casting,” the result from
that we call the “cast.” I would call pouring this
wax into this mold “casting,” and I would call the
resulting cylinder a “cast.”
x-Q. 97. As a practical operation how would
pouring molten wnx into n hot mold differ in the re¬
sult obtained from dipping a 'cold mold into the hot
wax and then removing it before the hot wax which
had congealed on the cold mold hnd melted?
By Mr. Dyke :
This question is without foundation in the
direct examination of this witness, it not ap¬
pearing that the witness has any information
about dipping a cold mold into molten wax and
removing it therefrom before the hot wax which
had congealed on the mold hnd melted. The
question is objected to as incompetent and as
not within the scope of the cross-examination.
A. I don’t know, never having seen the opera¬
tion last-named.
Maurice Joyce. 355
x-Q. 98. You stated, I be..Bvc, that when you un-
dertook to cast a record in a cold mold the re¬
sulting record was defective by reason of what you
termed “blisters,” and “bubbles.” Will you please
tell us what you meant by bubbles on the cast rec¬
ord?
A. I would call them small indentations and
some larger ones. When you pour hot wax into
that cold surface it shrinks away from it and does
not run sharp, and does not run into the undula¬
tions of the record groove. In other words, it does
not run “home.”
_ X"Q- Then by “bubbles” you meant indenta¬
tions, is that correct?
A. Yes, indentations.-
x-Q. 100. And I presume you meant that tiiese
indentations were caused by bubbles? Is that
right?
A. Yes, that is right. They are caused by the
cold air in the mold.
x-Q. 101. You say that when you first brought
this matter of your cast records to the attention
of the manager of the Columbia Phonograph Co. in
Washington he pronounced them good records?
A. Yes. .
x-Q. 102. Was that before or after you filed
your application?'
A. I think it was after.
x-Q. 103. How long after this was it that the
gentleman who was introduced to you as the vice-
president of the Columbia Phonograph Company of
New York visited you?
A. I cannot say.
x-Q. 104. Was it before or after yon sent, as you
allege, a record to Mr. Rogers in New York?
A. I think it was before, but I am not certain.
x-Q. 105. It is stated in your patent that the
356
Maurice Joyce.
heating of the mold slightly expands it. Was this
tlie object in heating the mold?
A. Tlie object was to expand it and at the same
to enable the wax to run sharp into the lines of the
mold.
x-Q. 10G. How did heating the mold enuse the
wax to run sharp into the lines?
A. Melted wax will run wherever you pour it
10 provided the surface against which you pour it is
warm or hot so as not to chill it. For instance, you
can take a piece of stereotype metal and draw a
series of lines in that metal and if the wax is warm
it will take up all the fine lines, if the plate and
wax is warm. If you pour the wax onto a cold plate
tlie lines will not run sharp.
x-Q. 107. Then yon think you could not get a
sharp impression or casting if the molten wax were
brought in contact with a cold mold?
^ A. I believe not, the wax is very sensitive to
cold, particularly.
x-Q. 108. As I understand yon, you found this to
he true when yon undertook to cast a record cylin¬
der into a cold mold, did yon not?
A. X did.
x-Q. 100. And the invention which you finally
sought to patent therefore put forward as one of its
characteristics that the mold must be a hot mold,
30 did it not?
A. The mold in my judgment must be a hot mold
in order to get good results, or a good cast.
x-Q. 110. And that is the reason why you em¬
phasized in the description which yon gave of your
invention, when you drew your patent application,
that the mold must be a hot mold, was it not?
A. Yes.
x-Q. 111. And you would regard a process of
40 casting a record which brought a cold mold into con-
Maurice Joyce. 357
tact with the molten wax as a different process from
that of your invention, would you not?
A. That depends upon the composition of the
mold; further I think a metal mold, unless heated,
always carries a chill with it unless heated in some
manner.
x-Q. 112. Quite right. But you would regard a
process of casting a record which brought the mol¬
ten wax into contact with a cold mold as different 10
. from your invention, would you not?
A. Well, I am not sufficiently expert to define
that. X can only explain as far as I went with the
process.
x-Q. 113. Did your invention include the use of a
cold mold?
By Mr. Dyke:
The question is objected to as defendant’s 20
counsel is again endeavoring to have tlie wit¬
ness define what his invention was. There is
no objection to the witness answering questions
as to what he did, but he has not qualified or
shown in any way that he is competent to de-
. fine what is an invention and what is not an in¬
vention.
A. The specifications and claims say what it is.
In answer to that I should say that the invention
is whatever they allow you in the claim. 30
Adjourned to meet at eleven A. M., Tuesday,
February 25, 1008.
Washington, D. O., Feb. 25, 1908.
Met pursuant to adjournment.
Present: Parties as before.
Cross-examination of Mr. Maurice Joyce con¬
tinued. 40
Maurice Joyce.
x-Q. 114. When you first set out with these ex¬
periments, your object was to produce molded dupli¬
cates of the commercial wax sound-records, was it
not?
A. Sly object was to duplicate records.
x-Q. 115. And did you know of any records other
than the commercial wax sound-records?
A. I bought records from the Columbia Phono¬
graph Company which they told me were duplicate
records.
By Sir. Cameron :
Question repeated.
A. I knew of no records except those I pur¬
chased.
x-Q. 11G. And those were the cylindrical records
made of material which you have been referring to
in the testimony ns of wax, were they not?
A. I believe so.
x-Q. 117. And it was your object when you first
started out to see if you could not mold duplicates
of these records, was it not?
A. Sly object was to duplicate those records.
x-Q. 118. By molding or casting?
A. By casting in a mold.
x-Q. 119. And the first mold you made was one
that did not have any record lines on the interior
of the mold, was it not; in other words, it was tlie
smooth bore mold No. 1 which you have shown us?
A. This, I believe, was the first mold I made to
cast a cylinder.
x-Q. 120. Did you expect to get a duplicate rec¬
ord from a smooth bored mold?
A. I did not.
x-Q. 121. Then why did you use such a mold?
A. I wanted to see if the cast would deliver from
the mold ; that is, 1 wanted to see if the grapkophone
wax would deliver.
Maurice Joyce.
359
x-Q. 122. In other words you wanted to learn
whether the wax would contract sufficiently to per¬
mit the cast to be taken out of the mold?
A. I did.
x-Q. 123. As a matter of fact, did you know at
that time that it had been old for over forty years
to cast wax into a smooth bored mold and, when the
wax had been cooled, the casting was then readily
withdrawn from the mold?
By Mr. Dyke:
Same objection as to x-Q. 75.
A. I did not at the time I made this mold.
x-Q. 124. You subsequently used a mold, I un¬
derstand, that had a record in reverse on the interior
of the mold, did you not?
A. .1 did.
x-Q. 125. And later on in your experiments you
heated this mold so that it was at about the temper¬
ature of molten wax and after the mold was heated
and the wax melted you poured the melted wax into
the mold, did you .not?
A. I did.
x-Q. 12G. And you then chilled the mold and its
contents and then withdrew the molded record from
the mold, did you not?
A. I did.
x-Q. 127. As a matter of fact did you know, at
the time you allege you did this, that it had been old
for over thirty years to heat a mold and melt wax,
tlie beat of the mold being at approximately the
same temperature as the molten wax, and then pour
the melted wax into tlie heated mold, then chill the
mold and contents, and withdraw the cast wax from
the mold?
By Mr. Dyke:-
Samc objection as to x-Q. 75. This question
is without the scope of the direct examination.
3G0
Maurice Joyce.
A. Not at tlic time I made these ensts.
x-Q. 128. I understand you to say you are a
printer?
A. Iam.
x-Q. 129. I suppose you know then wlint a prin¬
ter’s inking roll is?
A. I do.
x-Q. 130. At the time yon were making these ex-
10 periments, did you know, as a matter of fact, that
it was common and well-known in the art in making
printers’ rolls to pour the molten material for the
rolls into a previously heated mold, then chill the
mold and contents and after chilling to withdraw
the cast roll from the mold?
By Mr. Dyke :
The objections already made to questions
20 calling for tlie knowledge of the witness at the
time of his work in making record cylinders
are repeated ns to this question.
A. I know it was common to pour printers’ roll
composition into cold molds. I never saw the com¬
position poured into a heated mold. The composi¬
tion for printers’ rolls docs not shrink in the same
manner that wax does, and hence it is not necessary
to heat the molds, and the mold is not cooled in
order to withdraw the roll from the mold.
30 x-Q. 131. In practicing your invention after you
finally got it completed, you prepared a tubular
mold having the record in reverse on its interior,
did you not?
A. I made a mold upon the record.
x-Q. 132. And this mold which you made was
made by electro-deposition of copper on the record?
A. It was. •
x-Q. 138. And it had the record in reverse on its
interior, did it not?
40 A. Yes.
361
Maurice Joyce.
x-Q. 134. You then introduced the molten mate¬
rial into this mold around the core, did you not?
A. I did.
x-Q. 133. You then caused the material to set,
did you not?
A. I did.
x-Q. 13G. And also to contract?
A. The material contracted in setting.
x-Q. 137. Now, let us understand each other:
When the material begins to. congeal and finally as¬
sumes a solid state while yet quite soft, it has set,
has it not?
A. Well, now, I scarcely know how to answer
that question. The material is within the mold and
I can’t tell the condition of it just then.
x-Q. 138. It is not fluid, is it?
A. It is not fluid, after it congeals, naturally.
x-Q. 139. Each particle of the material then is
set or fixed in approximately the position which it
will occupy in the finished casting, is it not?
A. I think that is a technical question for me to
answer.
x-Q. 140. After you made your mold with the
record in reverse in its bore and poured the molten
material into the mold around the core, you per-
mitted.it to first pnss from the fluid to the congealed
or semi-solid state, did you not?
A. I permitted it to pass into the solid state
within the mold.
x-Q. 141. If you take one of these finished wax
records and subject it to any material pressure, it
would break, would it not?
. A. I have brokeu waxrecords pushing them upon
the holder in the graphoplione; they have dropped
on the floor and broken. I have never tried how
much pressure they would stand.
x-Q. 142. I call your attention to the. first lines
at the top of the first column of page 2 of your pat¬
ent, in which you say that
Maurice Joyce.
"a good way to apply pressure, however, is to
wait until the wax lias partly set and then
screw down the tapering core into its base-1”
(italics mine).
and I ask you what you meant when j-ou used the
expression “set” ns you did?
A. The object of that was that if there wns a
doubt as to the sharpness of this wax mold, pressure
could be applied to the core to force it down into the
base, but I found that this was not necessary' and it
x-Q. 143. You have not answered my question.
I did not ask you what the object was, I asked you
what you meant by the expression “set” in your
specification?
st it Wel1’ coole(I’ set when il got beyond the fluid
x-Q. 144. And does not the material thus set or
get beyond the fluid state before it gets cold?
A. I should judge so.
x-Q. 145. Now, returning to my x-Q. 135, after
you had made the mold with the record in reverse in
its bore and had poured the molten material into
the mold around the core, the material then “set,”
did it not?
A. It set provided the atmospheric conditions
vere not too warm to keep it in a fluid state.
x-Q. 14G. And the atmospheric conditions you
ook care to be in such condition that the material
rould thus set, did yon not?
x-Q. 147. Now, after you had mode your mold
with the record grooves in reverse in its bore, and
had poured the molten material into the mold
around the core, and had caused the material to set,
you then still further cooled the material to cause
it to contract away from the mold, did you not?
A. I sometimes cooled the material and some¬
times did not. I sometimes cooled it when I was
in a hurry to get it out.
x-Q. 148. By that you mean that you either
cooled it or let it cool?
A. I sometimes cooled it, or I let it cool if I was
not in a hurry.
x-Q. 149. And when the material was contracted
you withdrew' it from the mold lengthwise?
A. I did.
x-Q. 150. I understand then that in practicing
your invention you made a mold by the electro-de¬
position of metal on the original record, thereby
getting a mold with the record in reverse in its bore,
that you then poured molten material into the mold
around the core, permitted the material to set, then
cooled the material or permitted it to cool, thereby
causing it to contract, and then took the record out
of the mold. Is that correct?
A. It is.
x-Q. 151. Now' the only thing which you did in
practicing your process and which I omitted from
the last question was the fact that you heated the
mold before you poured the material into it, was
that not so?
A. I can’t keep the run of that, but I admit that
I heated the mold.
x-Q. 152. What did you do in practicing your in¬
vention, other than the heating of the |mold, which
is not mentioned in my x-Q. 150?
A. I would rather you would ask me a direct
question rather than answer that.
x-Q. 153. I have no doubt of the perfect truth
of your last answer but I am doing the questioning
here and shall have to be permitted to put my ques¬
tions in my own way. I ngain ask you, is there any¬
thing except the heating of the mold, which you did
Maurice Joyce.
Maurice Joyce.
in practicing your invention which I have not in¬
cluded inmyx-Q. 150?
By Mr. Dyke : *
Objection is made to the manner in which the
defendant’s counsel is proceeding with his
questioning, its evident purpose being to con¬
fuse the witness. The question is further ob¬
jected to for the reason that it calls for a con¬
clusion.
By Mr. Cameron :
Counsel for defendant replies that he has
sought to show this witness every consideration,
since it is perfectly evident that the witness is
seeking to answer the questions propounded to
him in good faith. Counsel for complainant,
however, in his direct examination has seen fit
to draw out from the witness what he did in
/making this invention, and it is defendant’s un¬
doubted right to go into this matter fully and
get a statement from the witness ns to just
what he did. This is the sole purpose of the
question objected to and it is therefore insisted
upon.
A. As I understand the question that is the only
thing I did.
Cross-examination of witness closed.
Be-direct examination by Mr. Dyke:
Rd-Q. 154. Mr. Joyce, as yon understand the sub¬
ject, is a casting operation confined to the filling of
a mold by pouring?
A. There are several ways of casting. In cast¬
ing type the metal is pumped into the mold. In
casting stereotype plates now-adays the metal is
pumped into the mold. In the old method of cast¬
ing stereotypes the molds were im/mersed into the
molten metal. In casting monotypes or linotypes
the metal is pumped into the mold or matrix.
Rd-Q. 155. I gather from your answer that you
mean to say that a casting operation can he made
by other inodes than pouring, is that right?
By Mr. Cameron :
. Question is objected to ns grossly leading.
A. Yes.
Rd-Q. 15G. Since you do not regard pouring as
an essential to casting, what do you regard as the
essential features in a casting operation?
By Mr. Cameron :
The question is objected to unless the witness
is offered as an expert in casting, and counsel
for complainants is warned that if the question
is persisted in, defendant shall insist on the
right of cross-examining the witness as an ex¬
pert in casting.
By Mr. Dyke:
Question withdrawn.
Rd-Q. 157. Who, if you know, was the man
named ns Mr. Devine in the letter of Rogers in evi¬
dence as Complainants’ Exhibit Robert Fletcher
Rogers Letter to Joyce July 5, 1898?
By Mr. Cameron :
Counsel for defendant objects to the question
as not proper re-direct, since in his cross-exam¬
ination the witness was not asked a single ques¬
tion in the remotest way relating to the subject-
matter of the question just propounded to the
witness.
A. I understood Mr. Devine to be the vice-presi¬
dent of the Columbia Phonograph Company.
By Mr. Cameron :
Answer objected to ns hearsay.
Maurice Joyce,
10
Recess.
Rd-Q. IDS. Mr. Joyce you have been nsked about
tbo statement in your patent that the mold is ex¬
panded by heating. Did you endonvor to make any
particular use of this expansion of the mold when
you carried on the work of making molded dupli¬
cate cylindrical sound-records to which 3’ou have
testified?
By Mr. Cameron :
Question objected to as not proper re-direct.
A. I knew that the metal expanded and shrunk
on cooling, and I wanted to take advantage of what¬
ever results there might be from the expansion and
contraction thereof.
Rd-Q. 159. How was this of advantage to you ?
A. I don’t know that there was any adv
I thought if there was I would take advantage of it.
I knew that the metal expanded upon heating and
shrunk upon cooling.
Rd-Q. 1G0. State as nearly as you can how long
a time elapsed from the making and using of Mold
Ho. 1, which has a blank interior surface, until you
made a mold having a record groove in reverse upon
its interior surface and cast a record cylinder there-
By Sir. Cameron :
Question objected to ns not proper re-direct.
By Mr. Dyke:
Attention is directed to x-Q. 117 to x-Q 122
and the answers thereto, as showing that this
mold and its purpose have been inquired about
during the cross-examination of this witness.
By Mr. Cameron :
Muuricc Joyce.
307
ness relates to information which should have
been brought out on such cross-examination;
that defendant was entitled to such information
in conducting such cross-examination and,
moreover, that the question propounded does
not relate to any matter specifically brought
out by such cross-examination.
A. It may have been a few days between the
time, probably a week; I can’t tell exactly the time.
Re-direct examination closed.
Re-cross examination of witness by Mr. Cameron :
Rx-Q. 1G1. AVns it not your idea that the mold
when heated would expand and that upon cooling
after the casting was allowed to partially set therein
the mold would shrink and thereby exert a pressure
on the casting and that you hoped to thereby get a
more sharp impression?
A. I may have thought so at the time, but found
that the shrinkage of the wax was greater than that
of the mold, and found that the contraction of the
mold did not have any effect upon the cast duplicate
because the contraction of the wax was greater than
that of the mold.
Rx-Q. 102. But at the time you umde your appli¬
cation you specifically mentioned the expansion of
the mold due to the lienting, did you not?
A. Yes, this heating expands the mold slightly.
Rx-Q. 103. And you thought at that time that
the contraction of the mold would exert pressure
upon the cast, did you not?
A. I may have thought so.
Rx-Q. 104. As a matter of fact, d id you not know
that it was old at that time to use a heated mold in
making a duplicate sound-record, which mold of
course would contract when it cooled and thus exert
pressure against the duplicate within the mold?
Maurice Joyce.
By Mr. Dyke:
The question is objected to ns n further at¬
tempt on the part of (lefemlnut’s counsel to
inquire into what the witness knew when he per¬
formed tlie operations which lie lias specified,
ns distinguished from what he did, which was
what the question originally propounded to the
witness was directed to. The objection is that
. . the question is not proper cross-cxnminntion,
10 for this reason.
A. I did not. I never saw' a duplicate cast rec¬
ord until I made one.
Examination of witness closed.
Signature and certificate waived.
MAURICE E. JOYCE, a witness produced on
20 behalf of complainant, being first duly sworn, testi¬
fies as follows in answer to interrogatories by’ Mr.
Dyke, to wit :
Question 1. Please state your name, age, resi¬
dence and occupation ?
Answer. Maurice E. Joyce; age 32 years; resi¬
dence 922 M St., N. IV., Washington, D. C. ; occupa¬
tion, Half-Tone Operator and Electrician.
Q. 2. Mr. Joyce, I place certain articles before
you which are marked as exhibits in this suit as
30 Complainant’s Exhibit Joyce Mold No. 1, Complain¬
ants’ Exhibit Joyce Mold No. 2, and Complainants’
Exhibit Joyce Mold No. 3. Please state wlmt these
articles are, if you know?
A. They are copper molds for phonographic
cylinders.
Q. 3. I also show you certain other physical ex¬
hibits in this suit marked Complainants’ Exhibits
Joyce Base No. 1, Complainants’ Exhibits Joyce
Base No. 2, and Complainants’ Exhibits Joyce Core.
40 Please state what these articles are?
Maurice E. Joyce.
369
A. The bases used in connection with molds for
phonographic cylinders. The core is also used in
connection with molds for phonographic cylinders.
Q. 4. Did you ever see these various exhibits be¬
fore, and if so, where?.
A. I have, and in the annex to the Evening Star
Building, Washington, D. C.
Q. 5. In what portion of the Star Annex?
A. By that do you mean on what floor? 10
Q. 6. Answer as best you can, Mr. Joyce.
A. Third floor, also tlie fourth.
Q. 7. To what is that floor of the Star Building
Annex devoted?
A. To Maurice Joyce Engraving Company.
Q. 8. Do you know Maurice Joyce, who has just ,
testified in this case?
A. Yes, sir.
Q. 9. Who is he?
A. My father. 20
Q. 10. Has he any connection with the Maurice
Joyce Engraving Company, of which you just
spoke?
A. Yes, sir. He is part owner of that business.
Q. 11. What does your father do?
A. He is on engraver.
Q. 12. Where does lie work?
A. At the Joyce Engraving Company’s plant.
Q. 13. That is the plant in the Star Building to 38
which you have just-referred, is it not?
A. Yes, sir.
Q. 14. Where are you employed?
A. Maurice Joyce Engraving Company.
370
Maurice E. Joyce.
Maurice E. Joyce.
371
Q. 1G. Were yon fnmilinr with wlmt your father
was doing during those years?
By Mr. Cameron :
Objected to ns leading.
A. Along certain lines, yes.
Q. 17. State what you know, if anything, about
the molds, bases and core which you have just iden-
10 tided?
A. I saw the molds during the process of making
from time to time; I saw the bases used in connec¬
tion with the molds; I also saw the mandrel or core
used in connection with the bases and molds. I also
saw molds cast of wax. I saw bases, molds, man¬
drels or cores, together with wax placed in an oven,
after which they were removed from the oven, the
mold blled with wax, cooled or nllowed to cool, and
removed, placed upon a mandrel or core, and put on
20 a phonograph dtted with a reproducer and heard
tones of various kinds.
Q. 18. Who did this work?
A. Mr. Joyce, my father.
Q. 19. By the “mandrel or core” last mentioned
in the answer that you have just given, do you mean
the same mandrel or core which is nn exhibit in this
suit?
A. I mean the mandrel or core exhibited, or one
similar to it.
Q. 20. Could a record be placed upon a phono¬
graph mandrel with a core like that in it?
A. At that time, yes.
Q. 21. . Have you any recollection of the time
when the operations to which you have testified to
as having witnessed were performed, and is there
anything in your life or experience by which you can
fix this time? If so, please state the time as near
as you can and anything by which yon can fix that
40 time.
A. As near as I can recollect I should judge it
to have been in the neighborhood of 1892 to 1894.
I think that I left school in 1893, and believe that
it was about that time that these experiments were
Q. 22. Can you fix this time with any certainty?
A. None other than as stated.
Q. 23. When was the change made from the
Standard Engraving Company to the Maurice Joyce
Company, if you know?
A. I remember the change but cannot state when
it took place.
Q. 24. Can you fix the time of these operations
relative to that change of business?
A. To the best of my knowledge it was before
and after.
Direct examination closed.
Cross-examination of witness by Mr. Cameron :
x-Q. 25. Mr. Joyce I do not understand you to
say that you have seen records made by the use of
the identical molds and bases and core offered here
as exhibits, do I?
A. Yes, sir.
x-Q. 26. All three of the molds?
A. That I cannot state, nor enn I state that they
were made from these molds, but I have seen records
molded by this process by my father, Mr. Joyce.
x-Q. 27. By what process ?
A. By placing mold in base, then placing man¬
drel or core in base, placed in gas oven, together
with wax, after wax had melted poured into mold,
after cooling, core or mandrel and mold removed,
and have seen said cast placed upon mandrel, put in
reproducing machine, and have heard musical
Maurice E. Joyce.
sounds, and tones. One of the costs Unit I heard on
a phonograph made by said process I think was a
Russian Mnrch.
x-Q. 2S. Then you do not wish to he understood
as swearing that you have seen llie.se identical molds
employed hi making casts, do you?
A. The molds as exhibited, or similar ones, I can.
1Q By Mr. Cameron :
Question ’repeated.
A. I could only do so after hearing a cast made
from exhibited molds.
By Mr. Cameron :
Question repeated and the witness’ attention
called to the fact that he is asked whether be
wishes to tie understood as swearing that he lias
20 See" t,ieSe i,1cntical m°W" employed in making
A. I do not.
x-Q. 20. Did you ever see these identical liases
employed in making casts?
A. I saw bases that I believe to be these exhibits.
x-Q. 30. Are you willing to swear that they were
these exhibits?
A. Yes; because I have never seen any other
than these.
30 x-Q. 31. Please examine Exhibit Mold No. 1.
Did you ever see a record made in a mold like that?
A. I cannot without the aid of a magnifying
glass tell whether or not Mold No. 1 has been made
from n blank or a record. Therefore I cannot say
whether I have seen a cast record made from said
mold.
x-Q. 32. Then you do not wish to be understood
in your answer to Q. 17 as saying that you have seen
casts placed upon the mandrel of a phonograph
40 fitted with a reproducer and heard tones of various
Maurice E. Joyce. 373
kinds, — I say you do not wish to be understood as
saying that the tones you- heard reproduced were
taken from a cast like Mold No. 1?
A. I do not.
x-Q. 33. You did not make this exception when
you were testifying in answer to Q. 17, did you?
A. I did not, for the reason that in answer to Q.
17 I did not have particularly mold No. 1 in mind.
x-Q. 34. You had just identified these molds, 1 0
had you not?
A. I had.
x-Q. 35. And you were asked to state what you
knew if anything about the jinolds, bases and core
which you had just identified and in answer thereto
you gave the answer under Q. 17, and you did not
except Mold No. 1, did you?
A. When I identified the exhibit I did so because
I believed that they were the ones I saw originally,
and the only ones that were iu existence when I first 20
saw them.
x-Q. 3G. Did you over see any other molds sim¬
ilar to No. 1?
A. May I ask in what respects?
x-Q. 37. Did you ever see another mold just like
No. 1?
A. I do not understand what you mean by “just
like. No. 1.” No. 1 may or may not be a mold of a
Wank. 3Q
x-Q. 38. You have undertaken to, identify this
mold. You have it before j'ou, and I again ask you
if you ever saw any other mold like it? If you
know you can say so. If you don’t know you can
say that.
A. I have seen molds similar to it.
x-Q. 30. Did you ever see one like Mold No. 1?
A. Now, that’s a question that I am trying to
answer with justice to myself and all concerned,
but I cannot unless the attorney specifies in exactly 40
374 Maurice E. Joyce.
what respects I have seen, or have not seen, others
like it.
x-Q. 40. The fact is you (lo not know whether
you have over seen other molds like this or not, do
you?
A. That I cannot say, becnusc, ns before stated,
I cannot tell whether or not the mold was made
from a record cylinder or a blank. If I say that it
10 is made from a record and it proves to be a blank I
am wrong.
x-Q. 41. Now ns you do not know whether this
is a mold from a blank or from a record, how are
you able to identify it as the mold which you have
seen before?
A. I saw the molds which were made by coating
a record or a blank cylinder with plumbago im¬
mersed in a solution of copper surrounded by an
anode, a current applied, copper deposited on said
20 blank and record, and I believe that the exhibits be¬
fore ine are those made by Mr. Joyce, my father. I
have seen them a number of times since they have
been .made, and they all have the general appearance
of having been made by that method.
x-Q. 42. Now, Mr. Joyce, don’t you know that
there are tens of thousands of such molds made in
precisely the manner which you have just described?
A. I do not.
X'Q- 43- If such is the fact, and I assure you it
30 is a fact, is there anything about these particular
molds that enables you to say that these are the ones
that you saw made?
A. If molds similar to these arc made I have
never seen thorn. I can call to mind that I think I
can recognize these molds through their thickness.
x-Q. 44. Do you know whether your father made
any molds in the year 1897?
Maurice E. Joyce. 876
A. I do not. I cannot call to mind anything
that happened in 1897 in connection with these or
any molds.
x-Q. 45. Do you remember any change which
your father made in his business in 1894?
A. I know that a change was made. Whether
or not it was in 1894 I cannot with any degree of
certainty say.
x-Q. 4G. Your father has stated that he made a 10
change in his business in 1894 and that he knows
he commenced experiments after lie made that
change in his business. If this is true then you arc
mistaken in your idea that you witnessed these oper¬
ations in the neighborhood of 1892 to 1894, arc you
not?
A. If Mr. Joyce has stated that he commenced
operations along this line in that year I will state
that I do not care to contradict him, and my ques- ^
tion was answered in accordance with the best of
my knowledge and belief.
x-Q. 47. Will you make oath to having seen any
of these experiments in the year 1892? .
A. No.
x-Q. 48. In 1893?
A. No.
x-Q. 49. In 1894?
A. No.
x-Q. 50. In 1895? g0
A. No. ’’
x-Q. 61. In 1890?
A. No.
x-Q. 52. In 1897 or 1898?
A. No.
x-Q. 63. The fact is that these events occurred a '
good many years ago and you cannot positively fix
the year in which you think you saw them. Is not
that true?
A. Yes, sir. 40
x-Q. 04. You say your father placed the mold in
an oven and heated it before he poured the melted
wax into the mold, is that right?
A. It is.
x-Q. 55. Did you ever see him mold the casting
without heating the mold?
A. I have.
x-Q. 5G. Did you ever hear any of the casts that
were thus made reproduced on a graphophone or
phonograph?
A. I cannot say that I have.
x-Q. 57. Can you say that you hnvc not?
A. No.
x-Q. 58. Did you ever hear the castings that
were made in a hot mold, reproduced on a grapho¬
phone or phonograph?
A. I have.
] . £'Q- 59- Yon ai'e positive that they were not cast¬
ings that had been made in a cold mold?
A. I am.
x-Q. GO. When did you hear such reproductions?
A. On one occasion I saw a cast made by means
of the heated mold, saw that cast placed on the
machine, and heard musical tones from it, and I be¬
lieve that the said cast was a reproduction of- a
Russian March. I do not know when.
x-Q. Gl. Is that the only occasion upon, which
you are willing to swear that you heard a reproduc-
tion from a casting made in a heated mold’
. be,'n? thc ** » »»«dc an impression,
but after then I heard them on several occasions but
I could not swear that they were made in heated
molds.
• >7W"s„tlle -Russian March cast made in a
mold like No. 3?
A. I believe it to have been.
x-Q. G3. Was it made in a mold like No. 2?
A. I believe it to have been.
377
Waller II. Miller.
x-Q. G4. Was it made in a mold like No. 1?
A. I believe No. 1 to be a mold of a blank, and
consequently no.
x-Q. G5. Did you ever see any casting made in
any one of these molds Nos. 1, 2 and 3 when said
mold was heated?
A. I cannot swear that I saw casts made from
these molds exhibited, but I can swear that I have
seen casts made from molds whose general appear- io
ance resembled the exhibits, with the exception of
No. 1, which as before stated I believe to be a blank.
Cross-examination closed.
Deposition closed.
Signature and certificate waived.
STIPULATION.
It is stipulated that MAURICE JOYCE, who has
testified herein, has had more than one application 20
in the Patent Oflice involving the duplication of
graphophone or phonograph sound-records, and
that Stilson Hutchins, if called as a witness would
testify that, in return for certain moneys which he
advanced to Mr. Joyce in connection with expenses
incurred, he, the said Hutchins, had a part interest
in au invention of Mr. Joyce relating to the dupli¬
cation of graphophone or phonograph souud-rec-
ords; and further that he would testify that he
docs not remember anything more than this about 30
thc matter.
Adjourned subject to notice.
Deposition of Wawhii H. Milled.
WALTER H. MILLER, a witness produced on
behalf of complainants, being first duly sworn, de¬
poses and says, in answer to questions propounded
by Mr. Dyer, as follows: 40
378
Walter 11. Miller.
Q. 1. Please state your name, age, residence, and
occupation?
A. Walter IT. Miller; age, 3S; residence, Linden
Place, Orange, New Jersey; occupation, manager of
the Record ing Department of Hie National Phono¬
graph Company.
Q. 2. Are you the same Walter H. Miller who
jointly with J. TV. Aylsworth, filed the applications
1° for patents Nos. GS3,fiir> and 0S3,(i7(i, granted to the
National Phonograph Company, here in suit?
A. I am.
Q. 3. Can you state where Mr. Aylsworth is at
the present time?
A. At Port Myers, Florida.
Q. 4. How long has he been at Fort Myers?
A. Somewhat over a month.
Q. What was the condition of Mr. Aylsworth
when he .went away?
20 Objected to as incompetent.
A. He had been very ill since November and was
ordered away for his health and is not expected
to return for several months.
Q. G. The applications for patents Nos. G83,G15
and G83,G7G here in suit were filed July 31, 1900;
prior to that date had you carried out the process
and used the apparatus for duplicating phono¬
graphic records described in these patents, and if
so, to what extent?
By Mr. Massie:
Objected to ns cnlling for a conclusion.
A. During the Inttor part of the year 1898 we
borrowed a mold from Mr. Wurth, who lmd charge
of making the molds at the laboratory, and a few
dipped samples were made by inserting a mold into
a baking powder can with a hole in the bottom, and
immersed the same by lowering it into a pot of
40 molten wax. The mold was then chilled and which
Walter 11. Miller.
379
allowed the film of wax to contract from the mold.
Several records were made by this method from
time to time, and active experiments were started
in February, 1S99. Up to this date the samples
we had made were only thin films of wax, about 1-1G
of an inch thick, and after February, 1899, we
began to experiment with the view of making
these records thicker, and succeeded in getting satis¬
factory results prior to January, 1902, when the 10
records were first put on the market commercially
by the National Phonograph Company, at which
time we had six hundred selections placed in our
catalog and stock made of same.
Q. 7. How did you happen to take up this pro-
lem of mnking duplicated phonograph records?
A. Aylsworth and I were talking over the prop¬
osition and we thought that we could mold a prac¬
tical commercial record from a mold.
Q. S. Did you over discuss this question with 20
Mr. Edison?
A. Quite frequently.
Q. 9. Did Mr. Edison request you and Aylsworth
to undertake the development commercially of the
problem?
A. Yes, sir, he did.
Q. 10. Was tliis before the latter part of the year
1898, when you borrowed the mold from Mr. Wurth,
with which you made your first experiment?
By Mr. Massie: 30
Objected to as leading.
A. When Mr. Edison gave us instructions to go
ahead witli the experiments on these records, it was
between the latter part of 1S9S and February, 1S99.
Q. 11. Then, as I understand it, you and Ayls¬
worth discussed the feasibility of mnking molded
records before Mr. Edison authorized you to go
ahead and endeavor to develop the problem com¬
mercially? 40
Walter II. Miller.
A. We did.
Q. 12. How for did your experiments go towards
demonstrating the co 1 practicability of the
process from February, 1S!)9, when yon appear to
have commenced your active experimenting, until
July 31, 1!)0(), when the applications for pntents
Nos. 083,015 and 0S3,07G were tiled?
By Mr. Hassle:
10
Objected to .as calling for conclusions ns to
“the process” and as to "commercial practica¬
bility.”
A. We lmd a small commercial plant in actual
operation producing commercial records for the
market under the process described in these patents
late in 1900.
Q. 13. Had you succeeded in making satisfactory
copies of phonograph records by the process de¬
scribed in these patents prior to July 31, 1900?
By Mr. Mnssic:
Objected to as lending, and as calling for a
conclusion with regard to the alleged process.”
A. Assuming that these patents were tiled on
that date, July 31, 1900, I am positive that satis¬
factory records were made prior to that time.
Q. 14. One of the features of the process and ap-
30, paratus disclosed in these patents is the formation
of a series of ribs on the interior of the duplicate
record ; wlmt was the particular purpose of using
this feature, and what, if any, practical advantages
does it possess?
A. The advantage of mnking the concentric rings
in a molded record is that it is one of the best ways
of making a true molded record. By true, I mean
a record that trims concentric and does not wobble
when put on a mandrel. Another advantage is that
40 it enables us to turn out the surplus wax which is
Waller It. Miller.
381
not needed, and in this way cheapen the record. It is
also a very quick method of boring cylinders’ add
enables us to do it in one operation, although some¬
times two are used. Tt has great advantages over
the spiral rib record, inasmuch as in order to make
a molded record with a spiral, it is necessary to use
a core and chili the inside of the core ns well as
tlie outside of the mold, in order to allow the molded
record to he released from the core. When this 10
method is used, there is a contraction on the outside
of tlie cylinder and also on the inside. The two con¬
tractions never being even, causes them to run out
or become eccentric, much more so than records
with concentric rings, as with our patents. An¬
other lind point to records with a spiral thread, and
made as explained above, .that is by a core with a
spiral groove, is that this uneven contraction makes
the record much more brittle than made by the
method under patents Nos. 083,015 and 0S3.070. 20
Q. 15. In reference to the saving in material by
reaming out tlie interior of the records to form a
scries of parallel ribs, as disclosed in the two pat¬
ents in suit, as compared with casting the records,
with the spiral rib, without reaming,, can you state
approximately to what extent a saving is effected?
By Mr. Mnssic:
Objected to as immaterial, on the ground that
among other tilings that neither patent is for 30
a record having parallel or concentric rings,
nor for tlie process of making such records.
A, I should say about 20%.
Answer objected to ns incompetent on the
ground that it docs not appear that the witness
is familiar with any other process of mnking
molded records.
Q. 1C. Are you familiar with liny other process 40
Waller IT. Milter
of making molded records tlmn that disclosed in the
two patents referred to?
Q. 17. What process do you now refer to ns be¬
ing other than that disclosed in said patents?
A. The nrocess of making sound records and
blanks in patents Nos. 720,905, granted May 5, 1903,
to W. H. Miller and A. N. Piermnn, and ]iatent
10 No. 72G,9(i(i, granted May 5, 1903, to W. H. Miller
and A. N. Pieman.
By Mr. Dyer:
Copies of patents numbered 720,905 and 720,-
9GG, referred to by the witness, are offered in
evidence and marked “Complainnnts’ Exhibit,
Millcr-Pierman Patent No. 720,905 and Com¬
plainants’ Exhibit, Millcr-Pierman Patent No.
72G,9GG.’
20 It is admitted by counsel for defendant, sub¬
ject to correction in case of error, that the ap¬
plications for the patents last referred to were
filed November 21, 1902, and that each of said
patents was granted to the National Phono¬
graph Company, one of the complainants here¬
in.
Question objected to as not properly stating
the process of the pntent inquired of, and ns
30 irrelevant and immaterial.
A. This process was used by me to make records
in an experimental way; in fact, I made some
molded records which were used for masters. This
process was also used in the factory under the super-
vision of Mr. Nelir to produce regular commercial
work, but it was abandoned as not a perfect success,
and I think: the cause was due to the excessive break-
ago and discards made in the process..
Q. IS. In comparing the advantages of a process
10 wherein duplicate records were finished by a remn-
AV alter IT. Miller. f383
ing operation, forming a series of concentric ribs
on the bore, with a process of molding a record by
casting a spiral rib on the bore, was your compari¬
son based upon actual experience in the art, or
merely upon theoretical considerations?
A. Upon actual experience in the art with the
Miller and Pierman process.
Q. 19. You state that the molded records made
under your process (Miller & Aylswortli patents in 10
suit) were first put. out commercially by the Na¬
tional Phonograph Company about January, 1902 ;
are the records of the National Phonograph Com¬
pany now' made by the same process or have they
been changed since that date?
Objected to as calling foi o 1 s on.
A. They are the same and have not been changed
with tiie exception of improvement of molding the
name at the end, which, however, is disclosed in 20
our patents.
Q. 20. Are you able to say whether the molded
records made liy the National Phonograph Company
under j'our process met with any public favor? I
have reference, .of conrsc, to the records manufac¬
tured under the Miller & Aylswortli patents in suit?
Objected to first, ns calling for a conclusion
with regard to what is the process of the pat¬
ents referred to, and second, as incompetent
and immaterial. 0
A. They have become enormously popular, and
at times we have had to produce over a hundred
thousand a day.
Q. 21. Having refereuce now to the particular
feature of forming a scries of concentric or parallel
ribs, on the record by a reaming operation, while the
record is still in tight engagement with the mold,
and while the material is sufficiently plastic as sug¬
gested iu the Miller & Aylswortli patents in suit, 40
384
Waller If. Miller.
what, if nny, commercial and practical value do you
attribute to this feature?
A. It has the advantage of producing them
cheaply; economizing on material, getting the best
possible result with reference to having them run
perfectly concentric; also, the advantage of mold-
ing them to produce the least brittle record with the
material used.
1° Q. 22. liy reaming the record, ns suggested in
the Hiller & Aylsworth patents, what about the time
required to finish the operation as compared to cast¬
ing a spiral rib on the bore?
Objected to as indefinite.
A. The time consumed m making a record by
either one of these processes varies somewhat as to
the temperature of the wax and the length of chill,
and I do not think there is nny material difference
20 in either ns to time.
Q. 23. With reference to the reaming 'operation
disclosed in these Hiller & Aylsworth patents, where
the reaming is performed while the record still
tightly engages the mold, did yon regard this as a
feature of importance or ns an unimportant detail?
Objected to as entirely incompetent and ns
utterly immaterial.
A. I thought this was one of the most important
30 features in the process; in fnct, I advised our attor¬
ney to be especially careful to cover all the points
on this particular operation.
Q. 24. In your opinion ns a practical man, would
it be possible at the present day to make comrner-
cal duplicate records by casting a spiral rib on the
bore?
A. Not in competition with the process now in
use, namely, that covered by the Miller & Aylsworth
patents.
40 Q. 25. That is to say, because of the special ad- '
Walter II. Miller.
385
vantages which you have pointed out, ns being ob¬
tained by this special process of reaming out the
record while still in the mold. Is this correct?
A. It is.
Q. 2G. Having reference to the two Hiller & Pior-
inan patents above referred to, numbered 72G,9G5
and 72G,9GG, of May 5, 1903, applications filed
November 21, 1902, what if anything was done with
this process prior to filing the applications for those 10
patents?
By Mr. Massie :
, The question is objected to ns immaterial.
A. Experiments were started on this process
around September 9, or the middle of September,
1902, and the object was to secure a record that
was more or less indestructible. It was a method
of molding a record by heating the mold to a tern- 20
perature of about 300°, more or less, and inserting
into the mold a ribbed core covered with sheet fiber,
such as cotton, cloth or other material and pouring
hot wax into it from the bottom by inserting it into
a pot of wax with studs 011 the bottom of the core
to automatically lift the mold and the wax would
run in. It was then taken out and chilled in water
both Inside the core and out. It was then extracted
by unscrewing the core from the record and the
• mold was then put in a cold jacket and the record 30
extracted.
Q. 27. With the process of this Miller and Pier-
man patent No. 72G,965, 1 understand that the mold
nnd core were introduced into the heated wnx-like
material, which entered the space between the mold .
and the core, nnd heated the mold and the core to
the temperature of the wax-like material. Is this
correct?
A. That is correct.
Q.-28. And as I understand it, you also carried 40
38G. Waller II. Miller.
out the modification of this process in which the
mold and (lie core were independently heated before
tlie wax was introduced. Is that correct?
A. That is correct.
By defendant’s counsel :
Does the witness intend by the last answer
.to describe something .set out in the Miller &
10 Herman patent?
A. I do not know whether it is in the patent,
but I know that we did this. In fact, I am certain
that was done nrior to the entrance of the wax at
tiie bottom as specifically shown in the Miller-Pier-
mnn patent No. 72(1,005.
Q. 20. In this latter patent, the statement is
made that the winding of flbrous material around
the cc ly he dispensed with, and a record he
20 made wholly of a wax-like material by the process
1 1 1 1 I> I y introducing the mold
and core in the hot wax-like material so as to heat
the mold and core to the temperature of the wax¬
like material which enters the spnee between the
mold and the core. Did you ever carry out this pro¬
cess for making records wholly of wax-like material,
or the equivalent process for that purpose consist¬
ing in first heating the mold and the core before
the introduction of the wax-like material?
Question objected to ns not properly stnting
the process of the patent inquired of, and ns ir¬
relevant and immaterial.
A. This process was used by me to make records
in an experimental way; in fact, I mnde some
molded records which were used for masters. This
process was also used in the factory under the
supervision of Mr. Nehr to produce regular com¬
mercial work, hut it was abandoned as not a per-
40. feet success, and I think the cause was due to the
Walter II. Miller. 887
excessive breakage and discards made in the pro¬
cess.
Q. 30. Did you make molded records for masters
by the Miller-Pierman process before November 21,
1902, the date of the applications for these patents?
Objected to as calling for a conclusion, "and
as tending to mislead in view of Q. 29.
A. I did. 10
Q. 31. Has this general process, consisting in in¬
troducing the hot wax-like material into a pre¬
viously heated mold, or into a mold which was
heated by the wax-like material, to your knowledge,
been practically used by the National Phonograph
Company, since the filing date of these applications,
November 21, 1902, and if so, to wliat extent?
The objections are repeated, and the question
is objected to as leading. 20
A. This method has been used to the extent of
making a large number of our molded masters used
for our regular business, and is now in use.
Q. 32. How perfect do you regard the process
for making the duplicate records, consisting in in¬
troducing the hot wax-like material into a heated
mold?
Objected to as indefinite and not stnting suf¬
ficient details ns to temperature, duration of 30
operations and other manipulations.
A. This process is excellent and one of the best
for accurate molding, but for production it is very
inferior to the dipping method, since a higher class
of labor is required to make it successful.
Q. 33. Are you familiar with the details of this
hot mold process as the same is now practiced by
the National Phonograph Company, and if so, please
describe it? 40
388 Walter IT. Miller.
A. The molds are inserted on n core and heated
on a gas burner in such a way that the llame does
not come in contact with the inside of the mold,
to a temperature varying according to the composi¬
tion from 250° up; we then pour wax in the top of
the mold witli a dipper; it is then inserted in cold
water to chill it. When it is cooled to a somewhat
plastic state, it is taken out of the water and the
10 core pushed out, there being no threads on the core.
The mold is then placed in a chuck in the lathe
and reamed out as described in the Miller & Ayls-
worth patents Nos. (183,071! and (183,015, except that
wo do not turn ribs in them. The results of this
method are used for masters to make molds to turn
out our regular product.
Q. 31. • In making molded masters, is a higher
degree of perfection rct|iiircd than in making the
regular product?
20 A. These molded masters for molds must he per¬
fect in every sense; they must have a perfectly clean,
polished surface, anil absolutely free from air holes.
Without waiving objections already entered
defendant’s counsel cross-examines ilc bene anna.
By Mr. Massie:
x-Q. 35. Are yon the W. H. Miller named in the
two Miller & Piermnn patents referred to herein?
A. Iain.
30 x-Q- >3<1. What is the temperature approximately
of the molten wax-like material you employed in
carrying out what you understand to he the process
of these Miller & Pierman. patents?
A. Between 300° nnd 100° F.
x-Q. 37. I understand that you are familiar with
the production of the molded master records made
by the National Phonograph Company. Is the mas¬
ter wax employed for that purpose substantially the
same ns the wax employed for molding complain-
40 ant’s regular cylinder record?
Walter E. Miller. 389
A. I do not know the exact composition of this
materiul, but its actions are very similar to that used
in our regular process. I understand there is a
slight change made in order to produce a certain
shrinkage which is necessary to make the threads
on the record come to the right number per inch.
x-Q. 3S. So far as you are at present aware, ex¬
cept for the fact that the, master wax is more accu¬
rately prepared as regard to shrinkage, there is lio 10
material ditlerencc between that and the ordinary
wax of the Edison molded records?
A. So far ns I know there is no other difference.
You must remember I am not the wax man; we
take our wax as it is given us to mold.
x-Q. 39. About what is the melting point of the
master wax?
A As near as I remember, about 290°.
x-Q. 40. Did you not mean that for about 190°F?
A. I did not. 20
x-Q. 41. In answer to Q. 20, you speak of heat¬
ing the mold, to a teineprature of about 300°, more
or less. Does this mean degrees Fall., and did you
actually read the temperature or is this from gen¬
eral impressions?
A. This temperature I speak of is Fahrenheit,
and the way I judged the temperature of the mold,
is that it is the custom to wet your finger nnd touch
it quickly, or spit on it to see if it sizzles, and I
assume that water boils at 212, and we wait until 30
this hisses considerably, nnd from that I judge that
the temperature of the mold must be considerably
over 212°.
x-Q. 42. With regard to the process carried out
by the National Phonograph Company in making its
molded masters, is the temperature of the mold
about the same, and is the temperature of the molten
wax about the same, namely, about 300° F., more or
less? 40
A. The molds are about 300° F., anil the wax, or
the temperature of the wax used, varies consider¬
ably. I have noticed from my own observations
they would he molding satisfactory records between
the temperatures of 325 and 400° F.
x-Q. 43. Please slate every difference with re¬
gard to process and temperature, etc., between the
method of making Edison molded records for the
market and the method of making molded master
records for the market?
A. The process used under the Miller & Ayls-
wortli patents. We have a mold which is open on
the top and bottom and is placed in a brass jacket.
This brass jacket and mold is slightly warmed, I
should say about the temperature of 100° F. It is
placed in a can with a hole in the bottom in such a
manner that when this can is lowered in a pot of
wax, the wax enters the bottom of the can through
the center of the mold to within of an incli above
the top, a brass cap being i>laced on the mold to
prevent it from overflowing. This mold remains
in the wax for about one minute and a half, in order
to let the wax congeal to a sufficient thickness. It is
then drawn out of the wax, taken out of the can and
then out of the cylindrical jacket. The ends are
then trimmed while in a plastic state, the mold in¬
serted into a chuck and reamed. It is then placed
in a cold jacket, which causes the cylinder to con¬
tract and become loose from the mold. It is then
placed on a tapered shell, the same shape as the
phonograph mandrel, and allowed to cool thor¬
oughly.
For the hot process, I would refer you to my an¬
swer to Q. 33.
x-Q. 44. In carrying out what you have described
in answer to Q. 33, which you refer to as the hot
Waller II. Miller.
391
you understaud to be the process of the Miller &
Aylswortli patents in suit?
A. I am of the opinion that this is under the
patents of Miller & Piennan.
x-Q. 45. Does that mean that in your opinion the
so-called “hot process,” as used in making the mas¬
ter records, does not carry out what you understand
to be the process of the Miller & Aylswortli patents
in suit? 10
A. My understanding of the hot process is that
we use that .part or the Miller & Aylswortli patents
which refers to the reaming of the record before it
has left the mold.
x-Q. 40. In Q. 29 you were asked regarding what
is there termed the equivalent process of the Miller-
Pierman patent, where the winding of fibrous ma¬
terial is dispensed with? In carrying out the pro¬
cess referred to (where the record is made wholly
of the wax-like material) in your opinion were you 20
practicing the process of the Miller & Aylswortli
patents here in suit?
' A. Those records which I referred to that we
made for masters were reamed out before the
cylinder left the mold; I do not think it would be
possible to mold a record with a core in it without
reaming it in some manner and use it for a master.
x-Q. 47. How long have you been familiar in a
general way with the phonographic art?
A. I should say, roughly, 18 years. 30
x-Q. 48. During that period has it not happened
quite frequently that the interior of the cylinder was
reamed out whether it had spiral ribs, or other forms
of ribs, or no ribs at all?
A. The process of reaming blanks has been used,
I might say, from the .beginning, but blanks are
made entirely different from molded records, ns
they are first reamed on the inside; they are then
put on a mandrel and turned on the outside, in order 40
to make them true. In the ease of molded records,
the outside cannot he tampered with.
x-Q. 49. I understand that sometime about the
latter part of the year 189S, you and Mr. Aylsworth
laid done some work in connection with a record
mold, a baking powder can and some melted wax;
that you thereafter had one or more conferences
with Mr. Edison, who authorized you to go aliead
10 with the matter seriously; and that in February,
1S99, you began active experiments, which resulted
in the matters and things set out in the patent in
suit. Can you state the substance of what you and
Mr. Aylsworth had accomplished before you con¬
sulted with Sir. Edison on the matter and the sub¬
stance of your disclosure to Mr. Edison?
A. The samples which we showed to Mr. Edison
at this time were quite perfect as to their general
surface, but their thickness as a record was not over
20 3-32 of an inch. In order to play these records, we
made a shell which would slip on the mandrel, and
then this record would slip over that shell. This,
as near ns I can remember, is the exhibit we made
to him.
x-Q. 50. I understand that for practical use such
a record would he too thin, and that your work, be¬
ginning seriously in February, 1899, resulted in the
production of castings having sufficient thickness.
30 ^ease state what you did, wlmt means you em-
. ployed, etc., to make these substantial records which
you did not employ in making the first thin ones?
A. Mr. Aylsworth and myself thought these rec¬
ords were quite commercial hut, however, it was
thought best to experiment to make them thicker,
and in order to do this it was accomplished by a
change in the composition and making the mold
thicker.
x-Q. 61. If I understand yon, before the inter-
40 view with Mr. Edison with the molds you then ern-
11 'alter 11. Miller. 393
ployed, aud with the particular “wax” you then
employed, you succeeded in getting cast records that
were only about 3-32 of an inch thick ; but thereafter
by employing a different composition and making
the wall of your mold thicker (so as to contain more
metal) you obtained a thicker deposit, which satis¬
fied the requirements of the management of your
Company. Please state in a general way the na¬
ture of the two different compositions and briefly 10
show wherein they differed?
A. In all these experiments Mr. Aylsworth had
charge of the wax end or the work, while I took care
of the mechanical end. As near as I recollect, with
the particular composition in which our records
were only' 3-32 of an inch thick, it was impossible
for us to get it any thicker.
x-Q. 52. How about the appearance of the bore
of the deposit obtained in those first instances? Was 2o
it perfectly smooth, or more or less lumpy or un¬
even?
A. The surface was perfectly smooth, as we
reamed it with a straight knife.
x-Q. 53. I meant before any reaming, and after
the deposit was chilled?
A. The surface was shiny, but when a cylinder is
dipped in this manner it is always necessary to ream
it, as it is always thicker in one end than the other.
That is to say, the bore is of smaller diameter at one 30
end than the other.
x-Q. 54. I understand that the thin casting ns
thus first obtained could not have been placed, with¬
out reaming upon a mandrel, if you had had a man¬
drel of the proper size? Was the deposit sufficiently
thick to permit ribs either spiral or parallel to be
cut therein?
A. They were not.
x-Q. 55. In casting sound records where a spiral 40
394 Alexander N. Pier man,
rib is cast simultaneously with making the record,
wherein is any material wasted?
A. The fact that if you make a record with a
tapered bore on the inside and a parallel surface
on the outside, and you have contained in this hore
h spiral thread elevated the same amount through¬
out the bore, it will take considerably more. wax
than if this same cylinder was made with a parallel
10 wall on the outside and concentric rings made in it
by scooping out considerable quantity of wax be¬
tween these concentric rings, as is done in the Miller
& Aylswortli process. In other words, by making
the cylinder with a shell of the same thickness
throughout (excluding the ribs, of course) less ma¬
terial will be required than if the wall of the
cylinder varies in thickness from one end of the
other, as for example, as suggested in the Miller &
Piennan patent, and as was first used by the de-
20 fendant with its first molded records.
Adjourned to 10 A. M., March 5, 1908.
March 5, 1908.
Met pursuant to adjournment.
Present :
Counsel as before.
30 ALEXANDER N. PIERMAN, a witness pro¬
duced on behalf of complainants, having been first
duly sworn, deposes and says in answer to questions
propounded by Mr. Dyke, as follows:
By Mr. DYKE:
Q. 1. Give yonr name, age, residence and occu¬
pation.
A. Alexander N. Pierman, age 38, residence 327
40 Orange street, Newark, N. J.; occupation, experi-
Alvxaiidvr iV. Pierman. 395
menter in the employ of the National Phonograph
Company.
Q. 2. How long have you been employed con¬
tinuously in your present capacity?
A. Since the latter part of June, 1902.
Q. 3. Are you the same Alexander N. Pierman,
who jointly with W. H. Miller filed on November
21, 1902, applications for patents, which subse¬
quently resulted in the issue of. patent No. 726,905, 10
dated May 5, 1903, to W. H. Miller and A. N. Pier¬
man, for Process of Making Sound Records or
Blanks, and patent No. 726,960, granted to the
same parties on the same date for Sound Record or
Blank, the same being offered as exhibits in these
suits by complainants in the taking of the deposi¬
tion of Walter H. Miller, and marked “Complain¬
ant’s Exhibit, Miller-Pierman Patent, No. 720,965,
and Complainant’s Exhibit, Miller-Pierman Patent
No. 72G.966?” 20
A. I am the same man.
Q. 4. Please explain what work you did, if any,
which led up to the filing of these applications?
Objected to as immaterial.
A. The work which led up to the filing of these
applications was being performed in the laboratory
by Mr. Vanderway, under Mr. Miller’s direction.
This work consisted in taking a mold having a 30
record on the end of the bore, plncing therein n
shaved blank cylinder, which fitted snugly, the
ends being scaled by a rod pnssing through two
metal heads, which also carried rubber gaskets
which pressed on the end of the mold containing
the blank cylinder, thereby senling it, rendering
it waterproof. The apparatus ns assembled was
plunged in boiling water which heated the mold
first, the mold in turn communicated the heat to
the surface of the blank contained therein, which 40
39(i
Alexander N. 1‘icn
in turn became partly soft on its surface, thereby
expanding, owing to the nature of the material of
which the blank was composed. The expansion of
the blank caused a perfect imprint of the reeord
upon its surface. The apparatus was then removed
from the water and chilled until it felt cold to the
touch. It was then thoroughly wiped dry on the
outside, the heads being removed, the blank or rec-
10 ord was removed by drawing it from one end of the
mold. One of these records made by what was
known as the expanding process was shown to me
by Mr. Miller. The process was also explained
to me at the time, and my opinion was asked of
it. I made the statement to Mr. Miller that if
the record could be put on there in perfect form
by simply warming the surface of the blank, it
could be put on there better if the wax was poured
in the mold when the mold was at the temperature
20 of the wax. He said he didn’t think it was possi¬
ble to produce a perfect surface, without air bub¬
bles, owing to the churning action of the wax when
being poured in, but he said, however, it would
do no harm to carry out the experiment, inasmuch
as I thought it could be done. I then took a reg¬
ular mold which was used for the expanding pro¬
cess, a mold which had been discarded because it
was damaged accidently while in use. I used this
damaged mold in order to avoid spoiling auothcr
good one. This mold I placed on a gas burner and
kept turning it, heating from the outside until it
produced a hissing sound when touched with the
wet Anger, I also hud an ordinary hollow cast-
iron core, known in practice ns a shell and used
ns a form for shrinking the dipped duplicates.
This mold and core I stood on eiid on an iron plate,
the plate being cold. I centered the core inside
of the mold as near as possible by judgment. I
40 then poured in melted wax, that is wax such as
Alexander N. Picrman. 307
is used for making, original records. The tem¬
perature of tins wax . was about 3G0 degrees P.
I filled the mold to overflowing, and as it shrunk I
added a little more to fill it up ns best I could.
IVhen this wax and mold cooled sufficient to set,
I took a wet towel, wrapping it around the mold
to chill it I nlso took a wet piece of waste nnd
stuffed it inside the hollow core, to extract ns
much heat ns possible and cool it. The core being
cooled faster than the outer mold, owing to the
fact that it was much thinner, was removed first,
as the wax shrunk away from it. The mold con¬
taining the molded record was then allowed to
stand until the record shrunk nnd loosened itself.
This cylinder or molded master was turned over
to Mr. Miller for his inspection. While it did not
run very true on the phonograph, owing to .the
fact that there were no positive means for locating
the core, still it could be reproduced from one
end to the other, nnd satisfied Mr. Miller that the
process -was far superior to the expanding process
upon which he had been experimenting. He then
advised me to have suitable apparatus made where¬
by the core could be located centrally in the mold,
which Tdid in a temporary manner. I again made
several experimental records, which were also sub¬
mitted to Mr. Miller for his inspection. They were
made in the same way. Mr. Miller agreed to have a
base and core made in one piece, carrying a ridge
or flange on the outer edge of the base, in which
the end of the mold was located. This apparatus
was finished in the course of about a week. I
then continued further experiments with various
compositions of wax, with the idea in view of get¬
ting the proper shrinkage. This, we found could
not be done with the molds we were then using,
as the feed or pitch of the screw on the machine
on which the original master was made from which
398 Alexander N. Pierman.
the mold was in turn mmlc, was not coarse enough.
Mr. Miller then caused to he made a feed screw for
the phonograph of special thread, the pitch of
which was estimated according to the shrinkage
of the wax, which we found to he most snitnbic for'
that purpose. This screw thread was 97 1-3 threads
to the inch. We had records made l>y an artist
specially on this thread. Molds were made from
these records, which were called “mother molds.”
I molded records in these mother molds, which were,
in turn electroplated, thereby forming a duplicate
mold. These molds being used in the same man¬
ner as the mother molds, with the exception that
the commercial composition or wax was melted
and poured in the mold, instead of the master-
record wax. We found the shrinkage from these
second molds to he near enough to 100 threads per
inch to make it a commercial proposition. These
20 several records, I believe, were submitted by Mr.
Miller to the proper authorities for tlieir judgment,
and I heard nothing further on this particular
subject for two or three weeks, during which time
I continued to experiment by endeavoring to pro¬
duce a record which would not break, by intro¬
ducing fibrous material, first by saturating the
fibrous material with the molten wax, then trying
to force it into the molds, which was heated to
3Q about 300 degrees. . This I found to be very im¬
practicable. I then tried to use fibrous mntcrial
in large pieces, instead of in finely divided state,
such as blotting paper, strips of newspaper, strips
of cheesecloth, and cotton wadding.
Q. 5. In Mr. Miller’s testimony the molded mas¬
ters, which you have testified to making, have been
described to be made by wliat lie calls the “hot
process”; using this term'to designate the process
and confining yourself to master molds in which no
40 material was used but the master wax, wliat work,
Alexander If. Pierman. 399
if any, did you do for Mr. Miller by the hot process
after the first experimental work to which you
have referred?
The first clause of the question is objected
to as without proper basis of fact in the evi¬
dence. The question is objected to as irrele-
. vant and immaterial.
A. I continued on these experiments. j0
Q. 6. Did or did not you thereafter make molded
masters for Mr. Miller by the hot process, and if
so, to wliat extent?
By defendant’s counsel :
Defendant’s counsel once for all reserves the
objection to the term the “hot process” as in¬
definite.
A. I did make molded masters for Mr. Miller,
as requsted by him from time to time, according to jo
his progress in making the molds from these mas¬
ters.
Q. 7. What has been the history of that work
since the time when you made such molded masters
for Mr. Miller?
A. My experiments with the fiboring process be¬
ing quite promising I continued to work on it,
using the same molds and also using tbe regular
commercial molds, and introducing the different
materials which seemed to be called for as the 30
experiment progressed. I gradually worked along
submitting samples to the proper authorities, until
they thought it was a commercial record which
would not break. During all these experiments
I made, occasionally, records for Mr. Miller by this
hot process. We started making commercial rec¬
ords in building known as No. 10, at West Orange.
I employed a number of men and boys to see what
could be done by way of production in a commercial
way. Mr. Miller continued to call on me to mold 40
400
Alexander N. Merman.
master records for liiin from mother molds from
time to time. The masters made from these mother
molds were used for making commercial molds.
There was about two selections out of the regular
list of 25 per month, which were made in this
way. They were shipped out with the regular
work, in order to see if any complaints would come
in, or if any one was able to distinguish them from
the regular work. These records proving satis¬
factory to tiie National Phonograph Company, were
ordered made on a larger scale and we set apart
a special kettle and apparatus for that purpose,
and Mr. Shannon, who was employed by me on the
fibre records, was put in’ charge of the master
molding l>y the hot process. After this I had
nothing further to do witli it, outside of advising
Mr. Shannon as occasion required.
Q. S. I call your attention to the Miller-Pierman
patents in evidence. In the patent which is num¬
bered 72G,0G5 I direct your attention to the follow¬
ing language on page 2, in lines 72 to 81, which is
as follows :
“While we have designed our improved pro¬
cess particularly for use in connection with
the manufacture of composite records of the
type invented by us, it will he understood that
our process can be effectively carried out in
tiie manufacture of records or blanks mndc
wholly of wax or wax-like material by merely
omitting the preliminary winding of a fibrous
material around the core as explained.”
Please state whether you ever used the mold and
process of tin’s patent for making molded masters.
Question objected to ns lending in form :nnd
as calling for an incompetent answer since
it is a conclusion of law ns to what is the
“process of this patent.”
Alexander N. Pierman. 401
Q. 9. Explain tiie relation of this work to the
work which you have said you did of making
molded masters by pouring molten wax into a pre¬
heated mold?
Objected to as incompetent.
A. I might say that the first records I made
were molded masters by pouring wax into a hot
mold. I afterward had a core and base which was 10
made iu one piece, constructed in such a manner
with three movable pins in the base of the core,
so that when tiie mold was placed on tiie base of
the core, both being heated, tiie mold being lowered
into the melted wax, resting on the bottom of tiie
tank, the pins will he forced up through the base
of the mold, forcing the mold up. The mold rest¬
ing on these three pins, left an opening between
the base and the mold, the wax would run in from
the bottom, carrying all air bubbles to tiie surface. 20 .
Upon raising the mold by means of a handle, at¬
tached to the core, tiie mold would slip back in
place, thereby forming a sort of a dipper contain¬
ing the melted wax, which was then chilled by
either dipping in a tank of cold water, or put in a
spraying apparatus, and the record extracted as
before stated.
Q. 10. How long did you leave the mold, base
and core in the melted wax, and what was tiie
approximate temperature of the wax? 30
A. The mold being previously heated to tiie
temperature of the wax, which was about 3G0 de¬
grees, it was only necessary to put it in or leave
it in long enough for the filling to take place.
Adjourned for lunch.
Q. 11. In molding records in the way just de¬
scribed you heated the mold, core and base, before
placing them in the wax, is this correct? 40
402
Alexander N. Pierman.
A. It is.
Q. 12. Was thnt your imiirlnlitc practice?
A. It was not.
Q. 13. Explain any other way in which you
molded records with the apparatus described in
your answer to Q. 9?
Question objected to ns irrelevant and im¬
material, likewise as indefinite with respect
to the time when any such other ways were
practiced.
A. By putting tile assembled mold and core
into the melted wax, allowing it to heat up to the
temperature of the wax, when it becomes ns hot
as the wax, the wax would flow in the mold itself;
it is then removed and treated as before. When
the assembled mold, base and' core are first placed
in the wax, the wax would congeal on it and would
not flow in until the mold became hot enough to
melt the wax which had congealed.
Q. 14. Please state, as briefly as possible, the
order in point of time in which yon molded records
bj’ pouring the wax into a mold already heated;
by submerging a mold in wax and allowing the
wax to flow into the mold through its bottom and
by placing a mold, base and core in the wax, the
core having a wrapping of material around it, such
as blotting pi ; o cl eesetloll and the like, ns you
have testified, and as is disclosed in the Miller-
Pierman pntent. By tin’s I mean to inquire the
order in which these various tilings were developed.
A. First records were cast by pouring ns de¬
scribed, and after I received the* mold which was
constructed in such a way thnt it would open auto¬
matically at the bottom by means of pins, I used
tiie process for putting the cold mold into the wax
and letting the wax heat it. The final manner in
which this work was done, up to the time we
Alexuwler N. Pierman. 403
stopped using the process of combining cotton with
the wax, we heated the mold and core by suspend¬
ing it in the wax from suitable hooks which pre¬
vented the mold and core from touching the bottom
of the tank. They were allowed to heat to the
same temperature as the wax without any wax
entering the mold. They were then transferred to
the molding tank and immersed in the wax; when
the mold and core touched the bottom of the tank
the pins would raise the mold and allow the wax
to enter the heated mold.
Q. 15. When, if you remember, did you begin
making records having cotton wool, or fibre
therein?
Question objected to ns immaterial.
A. I should say about six or seven weeks before
applying for a patent on it.
Q. 1G. And. if I understand you correctly, you
made molded masters or molded records by the va¬
rious hot processes that you have described, that
is to say, the various processes in which the iiot
mold is used, before the time mentioned in your
answer to the last question?
A. I did.
Direct examination closed.
By Mr. MASSIE:
x-Q. 17. You have spoken of Mr. Miller being
the mechanical man of you two, or perhaps Mr.
Miller is the oue who so testified. Are you the
wax expert of complainant’s laboratory?
A. Iam not.
x-Q. 18. Are you familiar with the vnrious wax¬
like compositions employed by the complainants?
A. I am only familiar witli them in their mixed
condition.
x-Q. 19. Is it the fact that complaints employ
regularly three different compositions, namely, one
■ . Illii
404 Alexander A. Pierman.
for making original records, to be engraved upon
tlie talking machine; another composition for mold¬
ing master records; and a third composition for
molding the commercial record?
A. That is so..
x-Q. 20. Wlmt differences, if any, can you name
as among these three compositions?
A. The principal difference is in the shrinkage.
x-Q. 21. Do yon mean the difference in amount
of shrinkage; or if in some other respect, what is
it? •
A. I mean the difference in the shrinkage due
to the variable proportions of like materials used.
x-Q. 22. Do you mean they all shrink in the
same manner, hut one composition shrinks more
than another and less than the third?
A. That has been my observance in practice.
x-Q. 23. Which of the. three shrinks tlie most,
which next, and which least?
A. I can’t state positively. At the time I con¬
ducted these experiments, in comparing the master
wax with the commercial wax, the master wax
shrunk the greater of the two. Since that time the
compositions have been improved by suitable
changes and I cannot clearly state the difference at
the present time.
x-Q. 24. And how did the wax for originals com¬
pare, at the time of your observations, with either
of the other two, with regard to shrinkage?
A. I had no occasion to compare them any fur¬
ther than tlie two mentioned, as the wax used in
the commercial blank cylinders was unsuitable for
my use n't the time.
x-Q. 25. Is it possible that you used the wax for
originals in only the first one or two experiments
which you reported to Mr. Miller; and thereafter
used only the other two compositions?
A. I should say, no.
Alexander N. Pierman. 405
x-Q. 20. I understand, however, that you found
by your experiments that tlie wax which you em¬
ployed in the first experiment (reported in answer
to Q. 4) was not suitable for the purpose, and that
you afterwards tried other compositions both sep¬
arately and otherwise; and that it was ultimately
decided that the wax such ns used for making orig¬
inal records was unsuitable, so that a different
composition was finally adopted. Is that correct? 10
A. There were several samples of wax given to
me for trial; tlie composition of which I know
nothing about.
x-Q. 27. What were tlie results of your trials of
the several compositions you have just referred to?
A. The results were that owing to tlie fact that
we did not have molds which were made from
records cut on a machine with tlie proper thread,
the first records I molded shrunk to about 102
threads to the inch. It was not entirely due to 20
the compositions used, as the wrong thread in the
mold had a good deal to do' with it.
x-Q. 28. Can you state tlie melting point of the
composition used by you when you molded records
by any of the processes set out in your direct ex¬
amination? .
A. I cannot.
x-Q. 20. In the course of your direct examina¬
tion, for instance in answer to Q. 10, you have
named the temperature of the wax ns being 3G0 de- 30
grecs, which I understand to mean Fahrenheit, did
you read this temperature yourself, or how did you
know what the temperature was?
A. In all experiments with wax, I invariably
keep a thermometer in the melted wax, ns should
the temperature gradually rise above 450 deegres
F., without my knowledge important ingredients,
would volatile and thereby alter the composition.
x?Q. 30. Did you make any special note of the 40
‘108 Alcmmlcr A1. Pier man.
temperature at which the wax became liquid, I
will refer specifically to the first experiment re¬
ported in answer to Q. 4, where you had heated the
damaged mold on u gus burner, also to your answer
to Q. 10?
A. In practice we do not refer to the melting
point of the wax. It is assumed that the melting
point and the point at which the melted wax con-
10 goals is the same. Therefore, we only note the
congealing point.
x-Q. 31. Did you note the congealing point in
the matters inquired of? ' .
A. I did not.
in connection with molding records, where your
mold was either heated beforehand, or heated by
its contact with the melted wax, did you observe
what relation there was between the temperature
of your molten wax and the temperature at which
it would congeal? That is, was the congealing
point only a few degrees below the temperature of
the molten wax, or was it 50 or 75 degrees below,
or was it even more than that?
A. It had always been my custom in molding
experiments in the hot process to use the wax at
least 70 degrees above the congealing point.
x-Q. 33. Can you state as a general proposition
30 "’Aether or not that rule is observed in the factory
operations of complainants; or are you speaking
solely for your own personal practice?
A. I am speaking of my personal practice.
x-Q 34. Do you know anything ns to the prac¬
tice of the processes in complainant’s factory? I
refer, of course, solely to the proposition that in
the so-called “hot process” of molding cylinder
records, the wax is in practice raised to a tempera¬
ture of at least 70 degrees F. above its congealing
40 point. b b
Alexander N. Picrm
407
A. I do not know what is used in the factory
practice.
x-Q. 35. Why have you followed the custom ns
to temperature, which you state in answer to x-Q.
32?
A. In my experiments with the material at
hand, the results seem to be the best under those
conditions.
x-Q. 30. During what period approximately 10
were you employed by the American Graphophone
Company, and in a general way, what were your
duties while there?
A. I went to work there in December, 1800, and
I left their employ in March, 1901. My duties
there were to establish a duplicating process, which
I developed mechanically and had complete charge
of up unto the time I left their employ.
x-Q. 37. Were you familiar with any molding
operations carried on at defendant’s factory, either 20
of sound records or blanks? .
A. I was familiar with both processes, one be¬
ing carried on commercially and another one ex¬
perimentally.
x-Q. 38. Please describe briefly the processes
carried on commercially while you were there?
A. It consisted in molding blank cylinders for
use on the duplicating machine, winch was prac¬
tically identical with that used at the Edison
Works. 30
x-Q. 39. Melted wax-like material was poured
into a smooth-bored metal cylinder, having centered
therein a tapering core provided with a spiral
groove; and after the casting became set it was ulti¬
mately removed from the mold?
A. That was it.
x-Q. 40. Please describe briefly the experimental
process referred to in answer to x-Q. 37, os carried
on at defendant’s factory when you were there ? 40
ii ■ lip is
A. This experimental molding process consist¬
ed of electroplating with copper a record, the cop¬
per shell thus produced was placed in a so-called
steam jacket. There was also placed inside of the
mold a core, the melted wax was then poured in
to fill up the mold. The steam was then turned on
and circulated through the jacket, thereby heating
the mold and its contents, after which the steam
1 was turned oil’ and allowed to escape by suitable
means and cold water was allowed to ilo-w in its
place, thereby cooling the record. The record was
then removed.
x-Q. 41. Wherein did this process you have just
described differ from the process carried out by
you with the damaged mold, as described in answer
to Q. <1?
By Mr. Dyke: Question objected to as in¬
competent, it being the function of this wit¬
ness to describe the various tilings which
have been done and the function of the Pat¬
ent Expert to make comparisons therebetween,
pert 1VltUCSS 18 uot dualified as a patent ex-
By Mr. Mnssie : Defendant’s counsel calls at-
follows -t0 ^ 9’ bUt leframcs tl,e Question ns
40 A. I used the gas flame to heat the mold and
served at defendant’s factory, and have referred
m answer to x-Q. 40, differ from the process whii
you referred to as carried out by you with the dai
aged mold?
By Mr. Dyke: Same objection. .
A. The principal difference was that I heate
tne mold and core first.
x-Q. 43. What other differences can yon name?
By Mr. Dyke: Same objection.
400
Alexander N. 1‘iennan.
core; I chilled the mold and core by contact with
rugs wet in cold water, and I got a good record.
•x-Q. 44. I call your attention to complainant’s
exhibits, Miller & Pierman Patent, IS’o. 720,005, and
read the following passage, beginning at line SI
of page 2 :
“We also wish to lay especial stress upon
that feature of our process consisting in mold¬
ing a blank or record around a hollow core, io
having a spiral groove therein, because in this
way we are able to successfully mold records or
blanks having an integral internal spiral rib,
and to remove the core from the linished arti¬
cle without injuriug the latter.”
Is this statement correct; that is, does this fea¬
ture present the advantage there asserted?
A. It docs, especially in combination with the
wax and fibrous material.
x-Q. 45. It is true likewise when casting a
record or blank composed entirely of the wax-like 20
composition, though perhaps the advantage over
other methods is not so marked as when fiber is
embedded?
A. That is not the case.
x-Q. 4G. Then is the statement quoted in x-Q.
44 true when casting records composed entirely of
the wax-like composition?
A. There is no advantage in this feature, unless
you use the fibre.
x-Q. 47. Who contributed the ideas quoted in 30
x-Q. 44, you or Mr. Miller, or was it the joint pro-
duction?
A. The idea of using a spiral thread was not
originated at tlie time by either Mr. Miller or
myself; it was taken from the regular practice of
molding blanks and was considered an advantage,
inasmuch as we could not gouge the grooves while
the material was warm, owing to the fact that the
reamer would rip out all the flbering we put in. 40
x-Q. 4S. Who suggested or originated the in¬
corporation of liber, you or Mr. Miller, or was it
a joint production?
By Mr. Dyke: Question objected to as im¬
material, the Miller-Piermau patents uot being
iu suit herein.
■ A. It was my invention.
10 x-Q. 49. Who originated the suggestion of Iinv-
ing tlie mold- at the temperature of tile wax instead
of being merely warm?
By Mr. Dyke: Same objection as to pre¬
vious question. i
A. I did.
x-Q. 50. At the time that Mr. Yunderway was
working in the complainant’s laboratory under
Mr. Miller’s direction, were molded records being
made by complainants, iu the way of regular course
20 of business; and if so state broadly, |,0w such
records were made?
A. The regular commercial records, as sold to
tlie public at that time were molded by what we
term in the factory the “dipping process ” which
consisted in taking a slightly warm mold, I should
say not. above 100 degrees 1>\, and placing it in a
water jacket, the water being sealed in the jacket,
winch was warmed by being immersed jn a tank
of water suitably heated by steam coils to about
30 100 degrees. This water jacket containing the
mold was placed in a receptacle called the “can,”
and allowed to descend slowly into t|le melted
wax by means of an air chamber having a piston
therein, the air escaping slowly, allowing the pis¬
ton carrying the mold to gradually descend into
the wax. It remained there, I should say, about
two minutes, the time being controlled by a clock,
winch started when the mold began to descend and
ran for a specified pre-arranged time, when it
40 would automatically, by electrical contact, light a
Alexander N. Her
red incandcsccut lamp, which was a signal to the
operator to raise tlie mold out of tlie wax and pass
it over to the next limn in tlie crew, who looked
after the extraction of the record from tlie mold.
x-Q. 51. In the first sentence of your answer
to Q. 7 you refer to trying different materials.
What classes of materials are you there referring
to?
A. Various wax-like compositions, which were 10
given to me in a mixqd condition.
x-Q. 52. I call your attention to Q. 9, which
docs not seem to be directly answered. Is there
any relation between tlie work referred to in tlie
previous question (Q. S) and the work you did
in making molded masters by pouring molten wax
in a pre-beated mold?
By Mr. Dyke: Counsel for complainants de¬
sires to explain that at tlie time tlie question re¬
ferred to was asked the witness, it was ex- oo
plained to him oil tlie record that (lie relation
inquired about was intended to mean merely
the relation to time and the answer which the
witness gives was with tiiis understanding.
The question ns now put apparently calling
for a comparison between the two processes
and an identification of tlie similarities and
differences is objected to as calling for an'
incompetent answer, as the witness is uot
A. Tlie difference is that in one case the wax
is poured in tlie top by hand, and in the' other case
it entered by way of the bottom by automatically
raising the mold.
x-Q. 53. You have referred to your work in
connection with the apparatus disclosed in the
Miller & Pierman patent, and have stated that by
•means of this apparatus you had molded sound
records wholly of wax or wax-like materials (fiber
being omitted). You have also referred to the 40
By .Mr. Dyke: The objection is made that this
question is incompetent, since it calls for a con¬
clusion, and the witness lias not qualilicd as a
patent expert.
By Jlr. Classic: The.witness is asked in the
question to state what differences lie observed
in the actual carrying out of the two processes.
He is asked for 'facts and the question is re¬
garded as proper. ' ■
- .Jh'- Dyke: When the witness had fin¬
ished describing the two processes as practiced,
lie lmd stated all that he knew as facts. A
comparison between these tilings necessarily in¬
volves a conclusion and the objection must be
insisted upon.
By Mr. aiassie : Had the last question asked
t e w itness to point out the differences between
n tni'f ,1'e%api!^u'ing °" thc recor<l. there
S l roo'n for “la objection. The question
asked the witness to point out the dilferences
between the things he actually saw, some dc-
tads of which may not be included in the an¬
swers already given.
By air. Dyke: The objection is that com¬
parisons involve conclusions as a matter of nec-
nnv^iirere„ei:mi,,,tinanta’ “el emmot^ee
nny difference l)et"'eou comparing any two
" ratten descriptions of things which lie saw
and comparing the tilings described.
A. I firmly believe that I have stated the dif-
* 1 s‘nte- h0«vi»r. tkat what I observed
the Qraphophone works was simply pouring
- ted wax into the space between the mold and
8 C01'°; tllat 1 did ou >"3’ fii'st experiment because
Alexander A7. Picn
413
it was the handiest way to do it, of which I was
aware at the time, and because it was necessary to •
get the wax in somehow. The method of allow¬
ing the wax to enter at the bottom was simply an
improvement over the pouring method by band in
order to save time. It made no material difference
in‘ tlie finished product.
x-Q. 54. Would there lie less tendency to en¬
trap air bubbles if you How the material in from
the bottom?
A. No, providing the mold was the proper tem¬
perature.
x-Q. 55. riease compare, as well ns you can, the
temperature of the mold and of the wax, in each
of the two instances inquired of?
A. The temperature of thc wax in the Graplio-
phone instance was not known to me, other than
the fact that it was in a molten condition; the mold
might have been considered slightly warm, but
could not be considered hot by any stretch of the
imagination. In the case of my experiments, I al¬
ways endeavored to have the temperature of the
mold equal to that of the wax.
x-Q. 5G. In referring to the temperature of the
mold at thc Graphophonc factory, which you say
might have been considered slightly warm, etc., .are
you speaking of the temperature before the wax-
had been introduced and before the steam bad
been introduced into the surrounding stenm jacket?
A. No.
x-Q. 57. Do you mean that after the steam had
been introduced into the jacket surrounding the
mold, and after the molten wax had been poured
into tile mold, that according to your understand¬
ing the mold could not be regarded as substantial¬
ly more than slightly warm?
A. -I refer to the temperature of the mold and
jacket at the time the wax was poured in.
Arthur 8. Jlrowne.
x-Q. 5S. I understand you to mean, without re¬
ferring to the temperature of the mold before tlic
wnx is put in, and without referring to its tem¬
perature after the wax and tile stenm have been
admitted, you mean that at the very moment the
wax was poured in, the mold was only slightly
warm?
A. That is correct.
Signature and certificate waived. ’
March G, 100S.
Met pursuant to adjournment.
Present :
1' 'bank L. Dveii, Esi|., for complainants.
° i* Sl HKOWEE, a witness produced on
behalf of complainants, having been first duly
sworn, deposes and says, in answer to questions
propounded by Mr. Dyer, as follows:
Direct examination by Mr. DYEK:
Q. 1. Give your name, age, residence and occu¬
pation?
A. Arthur S. Prowne, age 47; Washington,
J3. C.j patent solicitor and expert.
1 v Q f2' 1 T.lint expericnce Ii,lve you had qualifying
■V" t0 tcst!fy i,s «" expert in reference to patents
for inventions, and particularly in the phono¬
graphic art?
A. I was graduated from Dartmouth College,
Hanover, 3s. H., in 1881, and in the following year
I entered my present profession, in which I have
since been actively and continuously engaged. I
have prepared and prosecuted many hundreds of
applications for patents; and I have made limner-
ous investigations into the literature of various
purpose
tile novelty of inventions, and the scope, validity
ami larriiigemeiit of patents. I have frequently
visited workshops and factories for practical in¬
formation. I have frequently testified as an ex¬
pert witness in patent suits, having testified in
about two hundred such suits. I have been famil¬
iar with the phonographic art for about fifteen
years, and I have testified in a number of suits in
which phonographic patents were in suit.
Q. 3. Have you rend and do you understand
the specifications of the three patents in suit?
A. Yes.
Q. 4. Have yon rend the testimony heretofore
taken in these suits, and have you examined the
various exhibits which have been offered in evi¬
dence?
A. Yes.
Q. 5. Are yon familiar with the manufacture
of duplicate sound records as at present practised
by the complainants in these suits?
A. Yes.
Q. G. Please outline that mode of manufacture?
A. Tiie manufactlure of sound records involves
tlic following:
(1) Making the blanks on which the sound
groove is to be made.
(2) Making the sound groove in the blank. .
(3) Staking a master, mold from this sound rec¬
ord.
(4) Staking duplicate master records from the
master .mold.
(5) Staking other molds from the several dupli¬
cate masters.
(G) Staking the commercial duplicate sound
records from the duplicated molds.
These duplicate records are sold to customers
who use them on a sound reproducing mnehine to
410 Arthur S. Ifrownc.
reproduce the sounds which were previously re-
corded in the blank.
Tlic.su several operations can conveniently lie
described under appropriate headings in sequence.
Blank-making.
A suitable blank composition is boated until it
is in a fluid condition. It is a “soap composition”
such as was first set forth in the Edison patent
No. 130,274, June 17, 18110, (application filed July
30, 1SSS), this being subsequently developed to
furnish the soap composition now used. This
melted soap composition is poured into the cylin-
dut.il spate between the . Id and its core sub¬
stantially as illustrated in the Edison patent No.
414,701, November 12, 1SS9, (application filed An-
gust 10, 1SS0), as here illustrated, the outer
cylindrical mold has it smooth interior surface, and
the core has a spiral groove. When the material
poured into the mold is still in a soft and semi-
plastic condition, the cylindrical outer mold is
pulled off, and the spirally thrended core is un¬
screwed. This leaves the blank with a rough outer
surface, while the interior has a spiral rib as illus¬
trated in Fig. 2 of this Edison patent No. 414,701.
On account of the rough outer surface, the molded
blank is unfit for immediate nse. When cold, its
outer surface is shaved off l>y means of a small
lathe, so as to leave the exterior surface perfectly
smooth and cylindrical. Also the interior spiral
ribs are shaved so that they may exactly fit the
rotating mandrel of the sound recording machine.
The soap composition 6f which this blank is made
is of a character to be readily grooved in the sound
recorder.
Recording Sounds.
The blank is then placed on the mandrel of the
sound recorder or phonograph, and a popular sing¬
er, speaker or well-known band performs in the
Arthur 8. Browne.
417
vicinity, with the result that music or speech is
recorded in the blank. The fundamental charac¬
teristics of the sound recorder are those disclosed
in Edison’s original phonograph patent No. 200,-
521, Feb. 10, 1S7S, (application filed Dec. 24, 1877).
As here shown, a rotating cylinder or mandrel A,
carries the surface in which the sound record is to
be made, and in the vicinity is a diaphragm or
membrane B, which is set in vibration by sound
waves and which carries a stylus which makes a
sinuous record in the blank. As the mandrel ro¬
tates, it moves lengthwise, so that the resulting
sound groove is a spiral around the blank and
sinuous, or up and down with respect to its sur¬
face. These fundamental principles are those of
the modern phonograph, of course, much improved
in detail during the years which have intervened;
tlie sound groove being now cut or plowed out by
a cutting or engraving stylus, which plows through
the soap composition of which the blank is com¬
posed; and the stylus, with its diaphragm travers¬
ing lengthwise of the mandrel instead of the man¬
drel moving endwise, as described in Edison’s
British patent. No. 1C44, April 24, 187S. The re¬
sult is to cut a spiral groove in the surface of the
blank, this groove having up and down undula¬
tions, depending in shape, depth and frequency
upon the character of the sounds produced in its
vicinity.
This sound groove is Of delicate character. The
groove is less than one one-hundredth part of an
inch in width and its variation in depth is still
smaller. Tct, the faithful reproduction of the im¬
pressed sounds demands that there should be no
disturbance of this sound groove.
This “master” record can be used directly for
reproducing sounds, but is unsuitable because its
soft characteristics which render it easily cut re-
suit ill it lining ipiickly worii nut by reiieated uso
in tlie sound reproducing iiuteliinu. As the phono¬
graph business is now developed, its chief use is
for entertainment and amusement, and lienee a
largo number of duplicates must be readily and
economically made. Tlie artist who is engaged
commands a large remuneration for a single song,
and if only one sound record could be made for a
single singing, the expense would be prohibitory.
The other steps of manufacturing have to do with
the making of duplicates or this record.
Mold-making.
A cylindrical mclnl mold is made from the mas¬
ter record by an electro-plating anil typing opera¬
tion, so ns to produce a metal mold like that shown
in “Complainant’.s Exhibit, Commercial Joyce Ap¬
paratus.” Ail inspection of (bis mold shows it has
on its interior surface irregularities forming the
sound grooves in the master records, except, that
they are just t he reverse, there being projections
in the metal mold, where there are depressions in
the master record. . The process of making this
metal mold involves the destruction of the master
records, which is broken in nieces, in nnW ,r„i
Making Duplicate Masteiis.
The master mold just, described might be rti-
30 roctly used for making commercial sound records
for the market. This would, however, be too slow,
since only one duplicate could be made at a time:
nnd, moreover, as common workmen are employed
in making the duplicates, if there were but this
single master mold, any injury to it would undo
all the previous work which has involved the orig¬
inal expensive nrtistic performance. Accordingly,
the procedure is to make a sufficient number of
duplicate master” records from the master mold,
40 special care and attention being given to this opera-
After the composition lins 'licen poured into the
mold, the mold is dipped into cold water, where it
is allowed to remain for a short while. 'While the
molten material is still in a soft semi-plastic con¬
dition, the mold is removed from the water; the
core is pulled out, the cap ring is removed; the
surplus material which was within the cap ring
is cut off; and the interior is reamed out to the
10 proper size and shape. This reaming out. of the
interior is done while the record material is still
warm and within the mold, as is set forth in the
other two patents in suit, Nos. fiS3,01i> and fi$3,(i7fi,
both of October 1, 1001, except that no concentric
ribs are formed on the interior, since these dupli¬
cate masters are not intended for use on a sound
reproducer. The metallic mold with the warm du¬
plicate record still within it is then placed within
a cooling jacket through which cold water circu¬
lates, the hollow interior of the enclosed record fit¬
ting over a metallic supporting sleeve. The cooling
continued until the duplicate record has shrank
away from the interior irregular surfnee of the
mold. The mold is then lirted endwise off; nnd the
duplicate record still on the interior supporting
sleeve is then placed to one side until thoroughly
seasoned, when it is removed from the supporting
sleeve and is ready for further use.
As many of these duplicate masters arc made as
are necessary, say a dozen for an ordinary perform¬
ance.
Marino Dupmoatb Moi.ns.
The dozen duplicate masters are then used for
making as many duplicate metallic molds. These
are made just the same way ns nriginnl or master
molds; the making of each duplicate mold involving
the destruction of the duplicate master record,
which has to be broken to get it out. As a result
■10 of this operation, a dozen duplicate metallic molds
Arthur S. Bra
421
witli sound irregularities on the interior of each
are made, all being just alike.
Commeucial Sound llisconus.
With this dozen metallic molds, the commercial
sound records are produced in large quantities for
the market, all with the same song, speech or instru¬
mental music impressed therein. These duplicate
commercial records are made in substantial accord¬
ance with the method set forth in Miller & Ayls-
wortli patent in suit, No. GS3,(il5, Oct. 1, 1001, (ap¬
plication filed July 31, 15)00). This patent 1ms
already been so fully explained by three different
witnesses that it is 'unnecessary for me to say any¬
thing further. By this mode of procedure dupli¬
cate sound records are turned out in large quanti¬
ties and as most of the steps are such as can be
performed by unskilled workmen, they can lie
profitably sold at a low price.
Eacli duplicate record is hard and durable; it
has on its exterior a perfect reproduction of the
sound groove of the original master record, so that
it can reproduce the music with the same faithful¬
ness ns an original master record; and its outer
surface is perfectly cylindrical so as to co-operate
to tlie best advantage with the sound reproducing
machine, while its interior with its concentric rib
exactly fits the reproducer, and is exactly concen¬
tric with the cylindrical surface. All this is se¬
cured witli tlie minimum quantity of material, since
tlie internal concentric ribs alone contact with the
mandrel of tlie reproducer and the rest of the record
is reamed out us far ns tiie ultimate desired
strength permits.
Sound ItunnonuoxioN.
Tlie sound reproducing mnehino is substantially
a duplicate of the sound recording machine except
that it does not have a cutting style, but a rub-
bing style which trades in the sound groove without
removing any of the material. This reproducing
style is made of a jewel, such as sapphire as set
forth in the patent of Edison, No. -184,581, October
IS, 1S92, (application filed .May 27, 1S90), this hav¬
ing the requisite smoothness, the hardness to resist
wear and not being affected by moisture or tiic ma¬
terial of the sound record.
The steps necessary, therefore, to get the com¬
mercial records ready for tile market are elaborate
and those which the exigencies of this peculiar art
demand.
Q. 7. Please trace the history of tile art of re¬
cording and reproducing sounds preceding the
hlmg of the application of tl.e Joyce patent in suit,
October 13, 1897, so far as the same may be mate¬
rial in showing the important steps taken?
20 A- Hit art originated with Mr. Thomas A. Edi¬
son, who in 1S77 made the first machine capable of.
recording and thereafter reproducing sounds. This
machine lie called the “phonograph” and it is de-
scribed in his patent, No. 200,521, February 1!),
1 . ' ils 8toted 111 tl'u preceding answer. In this mu-
chme the recording is done through the indentation
i n OI y r°a!IS °f tI,c 801,1,(1 viliratiug stylus;
< C ic l epi eduction was done on the same machine
without anj intervening handling of the tin-foil,
30 except the restoration of the mandrel to the start¬
ing point. Few inventions have created the wide-
sprem mtercst which followed this invention of Mr.
■a ison. It was a sufficient marvel that sound could
be reproduced at all Experience, however, with
the original phonograph . . istruted that tin-
,,,lsu,t,lbIc ^cording material, and that
indentation wns an inadequate method. In spite
of its pbahUity, the tin-foil was. distorted during
an d iceo Ti f ' 5, snccessive reproduction soon pro-
40 duced additional distortion so that sounds soon be-
Arthur S. Browne.
423
cniue unrecognizable; and the tin-foil could not be
successfully removed from the machine on which it
was indented for subsequent use on another ma¬
chine.
Accordingly, effort was directed toward the pro¬
duction of a suitable recording material aud the
proper way of getting the sound record in it.
The first important improvement in the art is
set forth in the patent of Hell & Tainter No. 311,214, 10
May 4, 1SS6. This describes a sound record blank
composed of a foundation of pasteboard, with a sur¬
face coating of beeswax and pan-affine; this compo¬
sition being referred to as “wax-like” to identify
its characteristics. This patent also describes the
cutting or engraving method of making sound rec¬
ords by engraving or cutting out the material of
the blank by a cutting or engraving style vibrated
by sound waves. This cutting or engraving method
is the one which has since been commercially used. 20
The Tainter patent No. 311, 2SS of May 4, 1SSC,
illustrates tile modern form of recording and re¬
producing machines, in that the recording and re¬
producing slyle moves endwise of the blank or
sound record during its rotation, as in Edison’s
British patent No. Mill, April 21, 1S7S; and de¬
scribes the customary relation between the style
and the record surface in order that the reproduc¬
ing style may “track” or follow the sound record. 3Q
The Edison patent No. 414,761, November 12,
1889, shows -the molding of the blanks to be used
for recording purposes.
The Edisou patent No. 430,274, June 17, 1890,
describes the blank composition ns being a “soap
composition,” the improved and modern soap com¬
positions being the outgrowth of this origiunl sug¬
gestion.
The Edison patent No. 484,584, October 18, 1892,
describes the jewel reproducing style. 40
424
Arthur 8. lirowne.
The importance of duplicating the sound records
was early appreciated. In Mr. Edison’s British
patent upon the phonograph, No. 1044, April 24,
1S7S, several plans are suggested for making dupli-
records. The plan which was commercially
used prior to the application of the Joyce patent
in suit was embodied in these early suggestions,
in sIl.“'y" in FiS- 50 of this British patent,
(describing beginning at line IS, page 10)
one indented sound record was to lie used for
1 1 s blank fhroilgl t „ eel
ical duplicating devices. This was the pi-in-
P1 fill! II L h c
ployed prior to the invention of the Joyce patent
in suit. Such mechanical duplicating apparatus
is shown in the patent to Macdonald No. 559, S00,
May 12, ISDti, (application filed December 4, 1S95).
There is shown in this patent two parallel, equally
rotating mandrels, one of which has a master record
with a sound produced groove in it, and the other
has a blank on it. Connected by suitable mechani¬
cal connections are a reproducing style which Bil¬
lows the sound groove in the master record, and the
cutting style which cuts a corresponding sound
groove in the blank. This method of mechanical
duplication was that which was practically em¬
ployed prior to the Joyce invention. In fact, this
30 Patent of Macdonald ( who I understand, has testi¬
fied as a witness in this suit on behalf of dedend-
ant) shows that just prior to the Joyce application,
inventors were still at work trying to' improve me¬
chanically duplicating machines. Such mechani¬
cal duplication is iucITIcient, since it rapidly wears
the master record, and the duplicate records must
be made of material soft enough to be readily cut
and lienee lacking in durability and not suscepti-
ble of a great many repetitions.
40 Tll° Joyco Patent in suit contains the first dis¬
closure in the art of a practicable method of mak-
Arlhur S. lirowne.
ing duplicate sound records by a casting operation.
Q. S. In your last answer you have referred to
Mr. Edison’s British patent of 1S7S, containing sev¬
eral suggestions as to the duplication of sound rec¬
ords. Please refer to these suggestions; and also
state if between that date and 1S07, when the ap¬
plication for the Joyce patent in gait was filed,
there was any other suggestion made in patents for
duplicating sound records? 10
A. In addition to the mechanical duplication
suggested in Mr. Edison’s British patent No. 1G44,
April 24, 1S7S, it suggests other plans.
One suggested plan is to obtain a metal cylinder
by an electro-type process from the original master
for the record, this cylinder having the sound ir¬
regularities on -its exterior. The suggestion then is
to use this in connection with an opposing roller to
indent “strips or sheets of foil or rollers to produce 2o
copies.” This is described at lines 24-27, page 10,
and is illustrated in Fig. GO of the drawings.
Another plan is to use a similar roller of metal
with the sound irregularities on the exterior sur¬
face “so as to knurl or indent” the phonogram in
a roller 43 of soft metal that is to be pressed against
the roller 42 that has the sound irregularities; as
shown in Fig. G1 and described at lines 2S-30 of
page 10.
Another suggestion is to make a split or divided 30
mold, shown in Fig. 02, witii the sound irregulari¬
ties on its interior, duplicates to be made by filling
the mold with Plnster-of-Pnris when moist, the
mold being opened when the Plnster-of-Pnris is dry
to permit it to be removed. The duplicate record
would thus be a Plnster-of-Paris cj'liudcr. This is
described at lines 30-33, page 10.
It was also suggested that after making a metal¬
lic reproduction by electroplating, such metallic re- 40
production can lx* “used for impressing strips or
pieces of metal” (page 10, line 48).
All or nearly all of these suggestions have given
rise to numerous attempts to carry them out by dif¬
ferent inventors.
Jfechailienl duplication, either through direct
mechanical connections or pneumatically is set
forth in the following patents:
Douglass No. 475,490, Jiay 24, 1802.
Bettini No. 488,381, Dec. 20, 1S02.
Amet No. 539,212, Jiay 14, 1S95.
Amet No. 545,139, Sept. 3, 1S95.
The 'fainter patent No. 341, 2S7, Jiay 4, 1SSG,
suggests the making of a duplicate record in metal
by electroplating.
The Edison patent No. 484,582, Oct. IS, 1S92,
(application tiled Jan. 5, 1S9S), is a development
of the divided mold as suggested in the British
patent of 1S7S. It obtains a cylindrical metallic
mold through an electroplating process, and then
splits it longitudinally “by a very thin saw into a
number of parts— say, for illustration, three parts
—which are suitably mounted upon levers, so that
a mold is formed which can he closed to receive the
material to be molded and opened to permit of its
being taken out.” (Page 1, lines 09-75.) ’ This split
mold is then to be used as follows:
“Tlie duplicate phonograms aw produced by
means of Ibis mold by pouring therein and
preferably around a suitable core placed in tbe
mold, suitable substances, such as wax or wax-
1 ike. material, resin, or Piaster-oM'aris’ the ma¬
terial being preferably too hard to be satisfac-
'*.V the phonograph, or tbe dup¬
licate phonograms may be made by taking
sheets of smooth material, like waxed paper or
“If thl!"' "Pen the surface of
the mold by a plunger or otherwise, the sheets
Arthur 8. Itrownc.
427
being afterwards backed up by a wax, resin,
or cement.” (Page 1, lines 75-SS).
This plan is wholly impracticable. It is impossi-
sible to make a satisfactory sound record in a split
mold. Tlie splitting of the mold necessarily in¬
volves the removal or some of the metal containing
the sound record, thus destroying some of the sound
waves, and the molding of the material in such a
mold inevitably results in fins or burrs in case the
material is in condition to till the very tine irregu¬
larities which constitute the sound record.
I call especial attention to this patent because
I shall refer to it later.
The Edison patent No. 3S2,419, Jiay S, 1SSS, at¬
tempts to carry out the knurling suggestion of the
1S7S British patent. In accordance with this,
through electroplating a tint metal surface is to be
obtained, having the sound record thereon, and over
this is to be rolled under pressure a wax-like blank
to receive an impression of the sound record.
Herrington No. 399,204, Jlarch 12, 1SS9, pro¬
poses to make duplicates by impressing tin-foil
backed up by a softened material against an in¬
dented tin-foil record.
Herrington patent No. 399,205, Jlarch 12, 1SS9,
proposes a knurling operation resembling that of
the Edison patent No. 382,419.
The Lioret patent, No. 52S,273, Oct. 30, 1804, pro¬
poses to make celluloid duplicates. A metallic
matrix cylinder or mold is formed by electroplating
from a master record. A celluloid sleeve is then in¬
troduced inside, and mold and celluloid are then
plunged in the hot water so ns to soften the cellu¬
loid, which becomes plastic at about the tempera¬
ture of boiling water. A mandrel is then inserted
inside tlie celluloid ring, so as to forcibly expand
tlie then plastic celluloid and force it into intimate
contact with the inner sound groove or surface of
42S Arthur 8. lirowiiv.
the matrix cylinder or mold. The mold nnd cellu¬
loid sleeve are then plunged into cold water and the
specification says that the celluloid thus “recovers
ils hardness and is at the same time generally con¬
tracted sufficiently to permit (lie easy withdrawal
of the ring (' from the mold A’ liy unscrewing it
therefrom. If, however, the contraction of the ring
0 in this way is not sufficiently greater than Unit
10 of the mold A,’ the mold may he slightly warmed hy
heat externally applied.” (Page 2, lines 10S-115).
It will he noted that Lioret does not get sulllcieut
•scp.iiation to slip the celluloid duplicate out end¬
wise, hut only sufficient to free the two, so that the
celluloid duplicate can he unscrewed from the mold,
the unscrewing being permitted hy the spiral char¬
acter of the sound record.
The British patent to Young No. 1478 of Jan. 23,
2Q 18U4, describes a process similar to that of Lioret,
except that Young apparently found that the cellu¬
loid sleeve could not he removed from the mold by
unscrewing, since lie describes using a very thin
celluloid sleeve, so that (after the sound record
has been made in it by pressure) it can be collapsed
or bent so that it can be withdrawn from the mold.
These instances show that numerous attempts
were made prior to Joyce to get duplicate records,
and that the importance of doing so was widely np-
30 predated. Yet, the ultimate outcome of the en¬
deavors of the inventors prior to Joyce is exhibited
in the Macdonald patent No. 550,800, May 12, 1890
which sets forth an improved form of a mechanical
duplicating machine.
No one prior to Joyce had suggested making du¬
plicate records by casting molten wax-like material
m a heated continuous unbroken mold, the wax-like
material being of a character which would shrink
away from the mold on cooling without Injuring or
40 distorting the perfection of the sound record cast
Arthur 8. lirownc.
429
in it, such .shrinkage permitting the endwise .separa¬
tion of mold and finished record.
Q. 9. Hr. C. A. L. Mosaic, defendant’s expert, us
I understand him, finds no novelty in the subject
matter of claims 3, 4 and (I, of the Joyce patent in
suit No. S31,0(iS, in view of the prior state of the art,
discussed by him. Please state whether or not you
agree with Mr. Mussic, giving your reasons.
A. I do not agree with Mr. Classic.
In preceding answers r have already considered
all of the patents earlier than the Joyce application
relating to the phonographic art, which have been
discussed hy Mr. Massie, with the exception of the
Edison patent No. 382,402, May S, 1S8S, which
simply describes a blank said to be made by mold¬
ing, but containing no suggestion of how the mold¬
ing was done. Possibly it was done in the manner
described in Edison patent No. 414,701, Nov. 12,
1S80, to which I did refer.
So far as the phonographic art is concerned, there
is nothing to even cast a doubt upon the substantial
novelty of the process of the Joyce patent in suit,
as the same is defined in claims 3, I and 0. The his¬
tory of the phonographic art shows that from its
very beginning, in 1877, and throughout the period
of 20 years following until Joyce filed his applica¬
tion in 1897, numerous inventors in the phono¬
graphic art were struggling with the problem of
getting duplicate records, and that the mechanical
duplicating machines were the outcome. The Joyce
invention represents a turning point in the art.
Practically, the old method has been superseded,
and commercial duplicate records are today made
hy casting molten material in a continuous mold.
It remains, therefore, only to consider what bear¬
ing, if any, the instances in extraneous arts have to
which Mr. Massie refers.
On exploring the fields of other arts, having
•130
Arthur N. ttrmruc.
nothing to <lo with (lie reproduction of sounds, and
apparently foreign and remote I hereto, numerous
plans will lie found for making articles having
varied or irregular or ornamental contours.
A common plan is to have a mold or die with the
reverse of the desired configuration and to press or
force the material into the mold or die. This is the
method commonly employed when extreme dcli-
10 eacy is required in their production. Kor example,
this method is employed in the stamping of coins,
which in classical times were frequently cast. As
the surface to he reproduced in a sound record is of
extreme delicacy, minute variations being of vital
importance, it would seem a priori probable that
this would he an effective method of making dupli¬
cate sound records. In fact, this method was sug¬
gested in Mr. Edison’s British patent of 1S7S, the
20 “k" m'litig” process therein suggested by him con¬
sisting in ( lie forcing or pressing of material against
a hard surface having a reproduction of the sound
record. Numerous other attempts in the same di¬
rection are shown, among the instances which I
have cited in the next preceding answer, such being
the proposed plans of tiie Liorct patent No. 528,273
and of the Young British patent of 1894.
Probably the best known and most universally
employed method of making articles with irregular
30 contour is by easting in a mold, the completed arti¬
cles being removed by destroying the mold. This is
the common way or making iron castings. The mold
is commonly made of sand, shaped around the pat¬
tern and in various sections. The mold sections
arc then brought together, the molten mctnl is
poured in ; and after the cast is completed, the sand
mold is destroyed, thus exposing the cast article.
Tin's involves the destruction of the mold for each
article cast; and, obviously, is wholly inapplicable
40 to the production of duplicate sound records, since
Arthur 8. Bromic.
431
the mold must lie used over and over again, if there
is to he any utility in the process. So far ns I am
aware, no one has ever proposed to make duplicate
sound records by this process which is the most
common of all in the art of making duplicate arti¬
cles.
Another exceedingly common plan of making
articles of irregular contour is by the use of divided
or split molds, which can he used over and over 10
again and when the temperature or other character¬
istic of the material to he molded is such as not to
endanger (he mold. This is the plan commonly em¬
ployed when castings are to he made of soft inetals,
like lead, and alloys in which lead is an element.
Glassware is made in the same way, particularly
when the flow of glass is aided by blowing. Letter¬
ing on glass bottles is thus produced. Evidently,
this method is so common that it could not have
escaped the attention of those desiring to make du-
plicate sound records. Attempts to use such
method arc shown in the Edison British patent, of
1S78, which suggests making a Plaster-of-Paris
cast in a split mold ; and in the Edison U. S. patent
No. 4S1,582, Oct. IS, 1892,. which also suggests the
use of a split mold. I have already commented on
the impracticable character of any such plan for
making duplicate sound records.
Manifestly, the making of a sound record by ^
pressure is not applicable to materials which must
he rendered fluid before they can effectively conform
to the sound record surface, nor can casting in a
mold which must he destroyed, nor in a divided
mold, be feasibly carried out.
But, so far as I am aware, or so far as the record
discloses, these were the only known ways in the
. art of making duplicate articles having irregular
surfaces or contours produced as the result of the
casting, molding or pressing methods. 40
Arthur S.-Urownc.
It is significant tlmt in no art to which reference
lias been made l>y Hr. Classic, is there nny instance
prior to the Joyce application of casting any article
whatever, in a continuous mold having an irregular
unsymmctricnl molding surface; and, especially is
there no instance in any art where the material for
the duplicate is brought to a molten condition and
the mold itself is hot, when the molten mntcrial is
free to flow into all of the irregularities of tiic mold
which are to be faithfully reproduced.
Adjourned until 10 A. M. March C, 1908.
March 7, 100S.
Met pursuant to adjournment.
Counsel as before.
The examination of the witness ARTHUR S.
BROWNE is continued by Mr. Dyer. The witness
bore continues his answer to Q. 9.
But, Mr. Massie refers to patents and publica¬
tions describing the molding of candles and of ink¬
ing rollers for printing presses, which are heated
and into which the material to be molded is intro¬
duced in a molten condition. It is significant, how-,
ever, that in making candles and inking rollers, the
interior of the mold is always smooth, and no at¬
tempt has ever been made to use a mold having an
irregular unsymmctricnl molding surface for the
purpose of making a candle, or an inking roller with
an irregular unsynnnetricul surface. On the con¬
trary, it is important in both the candle and inking
roller art that the candies and rollers should have
smooth symmetrical outer surfaces. The molding
of candles is a great antiquity.- Groves & Thorp
(Vol. II,, page 09) state that "Mold candles are said
to have been introduced by the Stour de Brez, in the
Arthur S. lire
fifteenth century.” Although, this art is thus nearly
half a .thousand years old, nevertheless, Mr. Massie
lias not referred to a single instance wherein the
known methods of molding candles have ever been
utilized for the molding of articles which are to have
irregular unsymmetrical surfaces. The obvious in¬
ference is that the conditions surrounding the mold¬
ing of candles are such as to inevitably lead any ex¬
perimenter away from the attempt to use such mat¬
ters where irregular surfaces are to be. obtained as
a result of molding. Manifestly, the art of molding
candles is remote and foreign to the art of repro¬
ducing sounds; and the circumstance that five hun¬
dred years’ experience in molding candles has never
resulted in obtaining a molded irregular surface in
any art, would a priori have prevented any experi¬
menter from attempting to use candle methods.
Moreover, the history of the phonographic art shows
that candle-making never did suggest any improve¬
ment in making sound records, although for twenty
years an efficient plan was actively sought.
A brief consideration of molding candles will
show its utter incapacity to suggest any available
steps in making sound records. In considering the
making of candles I will refer not only to the
patents and publications mentioned by Mr. Massie,
but will also refer to other authorities. Mr. Massie
has referred to the following publications :
Groves & Thorp, Chemical Technology, 1895.
'-..The Scientific American Cyclopedia 1893,
Soaps and Candles, Jas, Cameron, 1890.
Brannt, Manufacturer of Soaps and Candles,
Carpenter, Soap and Candles, 1885;
’ Ott, Soap 'and Candles, 1867. ‘ ‘
Arthur 8. Browne.
434
The various publications anti patents on candle
making show tbe impossibility of utilizing the same
method for all sorts of candles. Some candles can
lie molded and others enn not. Those candles which
can he molded require different treatments, depend¬
ing upon the materinl employed. Moreover, the
molds have special characteristics which would be
impossible in molding sound records.
10 Referring to the characteristics of the molds, Ott
says (page 101) :
“For moulding, besides the common metal
molds (a mixture of tin and lend), molds of
glass are sometimes used. The former are
slightly tapering tubes, varying in length and
dimensions according to the size of the candle
to be manufactured, nnd, when required, nrc
arranged in regularly perforated wooden
frames or stands, with the smaller end down¬
ward, forming the upper or pointed part of the
20 candle.”
As here stated, the metal molds are made taper¬
ing, which obviously facilitates withdrawal as well
as giving a desired shape for the candle. Mani¬
festly, a tapering mold which will facilitate with¬
drawal is an impossibility in making duplicate
sound records, since the mold must conform to the
original master records, and that is a cylinder.
Also, Brnnnt (page 587) says:
30
“The molds are narrow, somewhat conical,
tubes, highly polished internally, in order to
impart a smooth surface to the candle. They
are bored out by machinery, so that the inter¬
ior shall bo perfectly true * * *. The molds
made in this country are of a better form, and
they are burnished by a vertical instead of a
rotary motion, which makes the candles easier
to remove.”
Thus, it appears that ready removal of the can-
40 dies is dependent not only on the tapering or
conical form of the mold, but also upon the polished
interior thereof, so much so, that n difference is ap¬
preciable in favor of polishing up and down, instead
of around and around. Manifestly, no such burn-
ishing up and down is available for the inside of a
sound record mold to facilitate the removal of the
cast record, since the essence of the mold is that it
should have an irregular molding surface corres¬
ponding to the original irregularities of the master 10
record. The teachings of the candle molding art
with respect to the molds are, hence, such ns to sug¬
gest its total unavailability to making duplicate
sound records.
I have already stated that in spite of five hun¬
dred years of molding candles, nevertheless there
are some candles which even now cannot be molded.
Groves & Thorp, referring to the early use of candle
molds, (Vol. II., page GO) says:
“Wax does not lend itself to molding, hence the 20
process was applied to tallow alone.” This same
treatise referring to the Rian's machine of 1801,
(page 80) says:
“A somewhat strange claim of Binns in
connection with this apparatus is his asserting
its applicability to the manufacture of beeswax
candles, which, in effect, lend themselves most
reluctantly to machine production. Possibly
the wish was father to the thought, that in the
contrivance for applying alternate heat and 30
cold to the molds, the becswnx might show it¬
self readier of extraction therefrom. Bo this
. as it may, even with the machines of to-day
beeswax cannot be molded satisfactorily, nnd
the means and appliances for this branch of the
candle-maker’s ait are the same now as they
were 200 years ago or more.” .
Other authorities refer to tiio same fact. Brannt
(page 018) says:
“Wax having the property of greatly shrink- 40
ing after cooling and 'tightly adhering to the
walls of the. mold, is not a very suitable mater¬
ial for molding- In fact, the molding of wnx-
candlcs is now rarely, if ever, performed, bnt if
executed is done in precisely the same manner
as prescribed for stonrine and parallinc cun-
“IYnx is not well ndnptcd for molding, on ac¬
count of its tendency to adhere to the -mold,
and its grent. contraction on cooling.”
Carpenter (page 27S) says: '
“Pouring is nsed only with wnx candles
which ciinnot he molded for the candles refuse
to leave the molds, or crack while doing so.”
According to' these authorities, wax lias apcculiar
behaviour. Although it shrinks in solidifying, yet
it seems that it shrinks in a peculiar manner, since
. it tends tp cling to the interior of the mold and away
from tlie center, where the wick is located — it being
usual in molding candles to hnvo the wick in place
centrally within the mold and the candle matcrinl,
being poured around it. Wax does not appenr to he
the only candle material which nets in this unex¬
pected manner, since Brannt in describing the mold¬
ing of spermaceti and paraffine candles, (page (110)
says:
“The moulding is executed in essentially the
same manner ns stenrine candles, only the sper¬
maceti. must he so hot, about 140° F., that -the
portion congealing. on the sides of the mold, the
first moment oil pouring in the mass, becomes
again fluid. In cooling spermaceti contracts to
such an extent that deep cavities .are formed
around the wick, which have subsequently to be
filled up.”
Although tlie spermaceti molds are externally
chilled, nevertheless the spermaceti in contracting
shrinks outwardly toward the mold and away from
the wick requiring subsequent refilling around the
wick.
Indeed, I fail to find in any of the literature
which I have examined concerning candle-making,
any intimation whatever to tlie effect that any ,can-
die-making material would in cooling, shrink radi¬
ally inward away from tlie mold so as to facilitate
easy removal. On the contrary, tlie descriptions all
infer a forcible expulsion, and special constructions
of the mold (such ns tapering form and lengthwise
polish of the material) or special manipulation to
get the chilled candles out. For example, Groves &
Thorp (Vol.- II., page SI) speak “of ramming tlie
cnndles out of the molds”; at page 82, they speak
of "forcing -the candles from the moulds”; and at
page 87, they say :
“Consequently the candles from such molds
ns did not obtain sufficient variation of temper¬
ature, were difficult to expel and not so sat¬
isfactorily made as those which had been prop¬
erly .treated— that is to say, particularly can¬
dles made from paraffine, since stearine can-
example, Brannt (page 503) says:
“The candles being forced from the molds
by 'the rammers are immediately secured and
hold stationary by depressing tlie lever G * * *.”
Other expedients have been tried in getting tlie
molded candle out. Brannt (page GOO ) says :
“To effect an easy removal of the candies
from the molds, A. Boyan has constructed a
machine shown in Figs. 141, 142, and 143, which
conducts cold and warm water to the walls of
the molds, the former for tlie purpose of quickly
cooling the material in the molds, and the lat-
438
Arthur 8. Hromuc.
“After tlie molds are wicked, the melted can¬
dle material is poured in and cooled by con¬
ducting cold ware . the pipe Q. The
cold water is tben shut off, and after disclmrg-
) inS Hint contained in the mold-carrier J
through the cock T, hot water is admitted
by a turn of the crank O, whereby the metal-
molds 1C quickly expand. If, now, by a turn
of the crank E, the cross bars C with the wicks
fastened to them are' raised up, the candles
are removed from the molds.”
In other words, after the candle has been chilled,
the mold is again heated to expand it away from
the candle, in order to get the candle out.
If it is desired to get a candle of polished nppear-
1 nnce, Carpenter (page 2S1), says:
“A polished appearance, is given to the enn-
dles by alternately admitting hot and cold
water into the water box; the adjustment of
the temperature is an operation needing spe-
cia experience, the men’s fingers forming us¬
ually their only thermometer.”
Depending upon the material, the time required
appears to vary widely. Groves & Tliorp (page 79,
Vol. II. ) says that the molding machines “can give
up a couple of dozen pounds of candles per turn-out,
two to three times an horn-, until the supply of
wick is exhausted”; thus indicating the time as
from twenty to thirty minutes.
On the other hand, in describing the molding of
tallow candles, Cameron (pages 265 and 266) says:
“??,mol?.s,are Generally mode of pewter,
caiefully polished inside • » » q>j,c me;j.
olwk18^ in\ Generally by a small can
ox jack, Pig. 50, and it is essential that tlie
Arthur 8. Browne.
439
tallow should completely fill the mold which
is of course maintained in an upright position.
The candle must remain entire on cooling with¬
out any cracks, and should readily be remov¬
able from the mold. These results can only
be attained when the fat at the sides cools more
rapidly than that in tlie interior, and a rapid
cooling is always necessary to prevent contrac¬
tion of the caudle. * * * If the tallow is
too hot, when poured in, the candles are apt to
stick, and are diflicult to draw; if too cold the
caudles are not uniform in appearance, hut
become granular looking. The candles are
ready to he taken out of the molds on the day
after casting, and then only require cutting
and trimming at the base.”
This operation requires hours. As stated, rapid
cooling is necessary “to prevent contraction” of the
candle; the inference being that with tallow it
would contract if not rapidly cooled while such
rapid cooling insures maintenance of contact be¬
tween cundles molded thus insuring that candles
shall he the shape of the mold.
This literature concerning the caudle molding art
shows that it is not universally applicable to candle
materials; that valuations have to be made depend¬
ing upon the material; and that a chief problem is
to get the caudle out of the mold, to which end a
tapered form is important, and the mold must be
highly polished on its interior (preferably length¬
wise) to aid removal and even then force is inquired
to expel tlie finished candle.
Not only is the literature silent as to the possi¬
bility of getting mi irregular unsyinmetrical outer
surface, but the teachings are that it would be iin-.
possible to utilize the candle molding methods in
Arthur 8. Itrownc.
Certainly the candle-lading art docs not contain
nu unmistakable disclosure of a process like that set
forth in the Joyce patent in suit, and defined in
claims 3, 4 and 0 thereof.
The candle-making patents referred to by Mr.
Massie do not shed any additional light on how to
successfully make duplicate sound records.
The British patent to Humphrey No. 454, August
10 22> 1S5C> simply describes a concedcdly old method
of making candles and asserts novelty only in ap¬
plying the old method to making paraffine candles.
It describes no step or method not fully set forth
in the publications to which I have referred.
The same is true with respect to the Cowles
patent No. 80,058, Jan. 19, 1SG9, which is simply
directed to making each mold in two parts, which
can be separated from each other, each section being
20 tubular, in order that a candle may be made slightly
larger at an intermediate point than at its opposite
ends. It is significant that the only reference in the
candle making art which involves making a candle
bigger at the middle point than at its ends, sets
forth a sectional mold for the purpose, the section
plane being at the point where the large dimension
The Fournier patent No. 545,250, Aug. 27," 1895,
contains no additional relevance. It refers to alter-
30 natcly applying hot and cold water (page 1, line 80)
such ns lias long been practical for making polished
. candles. 1
The making of inking rollers for printing presses
discloses nothing tending to show the applicability
thereof to making sound records. Such inking roll¬
ers are commonly infidc of a mixture of glue and
molasses and are soft and "tacky" when ready for
use, m a printing press. The essential cl.nracter-
istic is that tlie printing roller should be perfectly
40 smooth and cylindrical on the outside. So fax- as
Arthur S. lirownc.
Ml
the patents referred to (Bingham, No. 1S2,547,
Sept. 2G, 1S7G, and Bingham No. 419,914, Jan. 21,
1890) are concerned, it would appear that force was
necessai-y to get the finished roller out of the mold,
since the only reference to'this subject is near the
bottom of column 1, page 2 of the early Bingham
patent, which says that “the rollers drawn from
or forced out of the mold” is the final operation.
These patents contain no suggestion that there is 10
any slu-inkage away from the mold, which involves
no distortion .of the rollers, and they are wholly
silent os to the possibility of utilizing the method to
make any article with an irregular surface, much
less that the method could possibly be useful for
duplicating sound records.
Mr. Massie also refers to the Appelt patent No.
303,970, Aug. 2G, 1884, for making drawing rollers,
used in sxriniiiug machines for making thread. Such 9Q
drawing rollers frequently have elastic surfaces of
rubbei-, their purpose being to act upon slivers or
rovings of cotton, wool or other fibers, so that by
using pairs of rollers successively faster driven, the
roving can be drawn out or extended in length and
be thus brought to the suitable dimension for the
twisting or spinning operation. Appelt pi-oposes I o
make the drawing rollers of a fusible compound
composed of gelatine glycerine, and other more sec¬
ondary ingredients (page 1, line 15). Of course, 30
such a roller should lie cylindrical and should not
possess an irregular or unsymmctrical surface. Ap-
pelt docs suggest that this particular clastic com¬
pound (which is soft when in use) will shrink away
from its'mold on cooling so as to be readily with¬
drawn, but there is no intimation that any such
action would take place in connection with mate¬
rials suitable for duplicate sound records, or that
the contraction would be of sufficient extent to per-'
mit the withdrawal of the sound record, or that its 40
longitudinal shrinkage shall be in such manner us
not to distort the record. It is needless to udd that
the making of soft drawing rollers lor spinning ma¬
chines i.J u wholly unrelated art lor making dupli¬
cate sound records hard enough for sound repro¬
duction.
These are all of the items in the prior patented
10 P" 'I'sl'od art earlier than the Joyce application
to which air. aiassie has referred. The entire arts
fail to show any instance prior to Joyce of casting
a htjuid material into a continuous mold having an
irregular molding surface, to which the finished
• casting is to conform.
In making duplicate sound records, it is essential
that the sound record irregularities should be fnith-
ully reproduced to the minutest detail. Even if
it he assumed that it was part of prior knowledge
20 that the record material would shrink sulIicienUy
in coo mg so as to clear the mold to permit end-
wthdnpral, it could not be afflnned or as-
sumed a priori that such a method of casting would
be either feasible or possible. When a material
SdiTu rr;n.kS1i" 1,11 W it shrinks
" il 1 1 W, it shrinks longitudinally
wooin , “S n,l ,!llIy- Tllese Native shrinkings
Mould be proportional to the dimensions. If it be
assumed that the thickness of the molded record
30 leSrth fajj/" I0 11,010 iS % °f m inch an(1 its
uents fin , W"Ich Ure cIo8cl>’ mcasure-
w i Complainant’s Exhibit, Commercial
be oiuhtem Ui- ’I/110 le"BtI,wise slirinkage would
be o gl teen tunes that of the radial shrinkage It
« ?.*» »£ ta
40 mg any light on this subject, and the possibility
Arthur S. lirownc.
443
of doing so could be determined only by trying
I fail, therefore, to find anything in the prior
art of sound reproduction, or in any of the other
arts referred to by Mr. Massie, which negatives
the novelty of the process of the Joyce patent as
defined in Claims 3, 4 and G of his patent. He was
the first who ever cast molten material suitable
for sound reproduction into a continuous mold
having sound irregularities on its interior, and to
have his mold hot during the period when the
molten sound record material was flowing and con¬
forming itself to and around the irregular surfaces.
Moreover, he was the first to show by subsequent
artificial cooling, that a cast record would shrink
away from the mold so ns to clear the irregularities
thereof, thereby permitting the separation of the
two, and without interfering with the faithful re¬
production in the duplicated cast record of the
original master record. It is indubitable that
Joyce made a distinct advance in the phonographic
art, and did something which had never been done
before. The ultimate and final achievement of his
predecessors in the sound reproduction art (as ex¬
hibited by patents and publications prior to his
application) was the mechanical duplicating ma¬
chine of the Macdonald patent No. 559,800, May
12, 1S9G.
For all of tliese reasons, I am of the opinion that
the Joyce process, as defined in Claims 3, 4 and G,
of his patent in suit, was substantially new.
Q. 10. You have referred in your proceeding
answer to the longitudinal contraction or shrinkage
of the duplicate sound records. Is this of sufficient
extent to be taken into consideration in the practi¬
cal making of commercial sound records?
A. It is. The ordinary reproducing machines
on the market have one hundred threads to the inch
for feeding the reproducing stylus, and the com-
mercinl soil ml records should Imve (he same pitch
for the spiral sound groove thereon. To get this
result, in view of the shrinkage of the material,
the original sounds must lie produced on a sound
recording machine having a coarser pitch. In com¬
plainant’s course of manufacture, as there are two
shrinkages involved (one in making the duplicate
masters and the second in making the commercial
10 sound records) the pitch of the original recording
machine has to he correspondingly increased, and
it has 97 1-3 threads per inch. The difference in
the original and final pitch is the result of the
longitudinal shrinkage during the casting opera¬
tions.
Q. 11. Hr. Jlassie, defendant’s expert, lias re¬
ferred to the Edison patent No. 713,209, granted
Nov. 11, 1902, on an application filed March 5,
2Q 1S9S, in connection with the Joyce patent in suit.
Please compare this Edison process with that of
the Joyce patent and state the result?
A. This Edison process is different from that
of Joyce and is a pressing process, as contrasted
with the Joyce casting process. In accordance with
tins Edison process, a cylindrical metallic mold is
made from a master record so as to have sound
ncDlitcs i its s it f itc A cylindrical blank
of sound record material is then independently
30 molded and is made of a diameter just less than
the minimum diameter of the mold. This blank
is then inserted m the mold and both are heated
sufficiently to soften the record material, but not
to melt it. The record material expands more
than the metal mold, so as to thereby bo forced by
the expansion into contact with the mold surface.
■Iu case this should be insufficient, the patent sug¬
gests that the blanks can be further expanded into
engagement with the mold surface by a tapering
40 mandrel. After tin's is done the blank and mold
are chilled in a refrigerating chamber and the
duplicate record shrinks sufficiently to lie sepa-
Tlicrc is no suggestion of directly casting the
molten record material into the mold, which is
lieatcd when the molded record material is in con¬
tact therewith, as in Joyce. Joyce avoids the pre¬
liminary making of a cylindrical blank of a precise
and particular diameter; and lie avoids the use of , 10
a mandrel ; and insures a greater perfection in the
faithful copying in the mold surface.
Assuming that the Edison process was in all
respects a good one, it could by no means be in¬
ferred that molten material could give an accurate;
reproduction, or that its laws of shrinkage would
be similar to those of a previously molded blank,
which was never permitted to reach a melted con¬
dition. 2Q
Tiie Joyce process is distinctly and radically dif- ..
ferent from that of Edison.
Q. 12. I direct your attention to the testimony
of Mr. Delos Hdldcn, on behalf of the complainants,
and of Mr. Miissic, on behalf of the defendant, in
tiie comparison of the'proccss practiced by the de¬
fendant and that defined in Claims 3, I and 0 of
the Joyce patent, in suit. Please consider' the con¬
clusions of these gentlemen arid ' state "whether or
not you agree with either of them, and why. ' 30
A. I agree with Mr. 'Holden that the defendant-
practices the process defined in these claim's, and
I find nothing in the prior art or'iri the reasons
given by Mr. Jlassie which1 leads to the different
conclusion reached by 'Mr. Jlassie’.
As I understand Mr. Jhissie, he distinguishes
the defendant’s process front that of Joyce because
Joyce first heats his mold to the desired 'tempera¬
ture before pouring the melted record material
into it; whereas the defendant* lowers its mold into jq
7
a batli of the molten material so quickly that the
mold is still cool when it becomes filled with the
molten material, and becomes healed only ns the
result of its immersion in the lintli and the pres¬
ence of tlie molten material inside of it.
The specific difference referred to by Mr. Massic
does exist, hut does not affect the substantial re-
semblance because the two specific method^ are
substantial equivalents. The point in heating the
mold is that both mold and material' shall be hot
at the same time, in order that the material may
adequately fill the mold and flow in and around
its irregularities. This result is the same, whether
the mold is first heated before the material is in¬
troduced or whether the heating of the mold is
the result of the immersion in the bath. In fact,
■I understand Mr. Macdonald (one of defendant’s
2Q witnesses) concedes that defendant’s process
(though slower) woidd still he the same if the
mold were lowered into the bath so gradually that
it would lie raised to the requisite temperature
before the molten material flowed into it. This
would be a pre-heating, just ns if the henting were
independently accomplished. Ho one of the perti¬
nent Joyce Claims specifics the pre-heating; it suf¬
ficing that both mold and material should be hot
to permit intimate contact. This specific diffor-
30 once, therefore, does not prevent their being equiva¬
lents.
There is nothing in the prior art necessitating
the exclusion of defendant’s equivalent for the
equivalent pre-heating specifically described, by
Joyce. The defined process is cqunlly novei,
whether the mold is heated before the material is
introduced or after.
Met pursuant to agreement.
Present:
Counsel as before.
Direct examination of Mr. Browne continued.
By Mr. MASS 1 15:
Defendant’s counsel now enters timely objection
to the statement in answer to Q. G, under the head¬
ing, “Making Duplicate Masters,” that the same
“are made in accordance with the Joyce patent in
suit,” on tlie ground that, the statement is a con¬
clusion of law and without any basis of fact in
the evidence. \
Objection is made to tlie estimate in tlie same
paragraph for tlie working temperature of the mold,
viz., 2G0 degrees P., .011 the ground that the same
is purely conjectural.
Objection is made to tlie statement in the same
paragraph that tlie master wax is substantially
the composition of tlie Aylsworth patent No. 7S2,-
375, on tlie ground, first, that tlie statement is in¬
competent as being merely hearsay; and second,
it is incompetent ns being a conclusion of law
without any basis of facts.
Tlie statement in the same answer under the
heading “Commercial Sound Records,” to the effect
that complainant’s ultimate commercial records
are made in substantial accordance with the meth¬
od set forth in tlie Miller & Aylsworth patent in
suit, is objected to on the ground that tlie same is
a mere conclusion of law, and without sufficient
basis of fact.
Adjourned subject to notice.
40 (West Virginia Suits.)
Objection is made to the lost sentence of the same
paragraph as hearsay and incompetent.
Objection is made to (lie statement in the eighth
'paragraph of the answer to Q. 0, on the ground
that the assumption that the material must be ren¬
dered fluid, etc., is without basis of fact in the
evidence, a pure assumption, and misleading.
Q. 13. Please consider the patents referred to
by Mr. Massie in connection with the Miller &
Aylsworth patent in suit, No. G83,G15, Oct. 1, 1001,
10 and state whether or not you find anything therein
to negative the novelty of the subject matter of
Claims 3, 4 and 5 thereof.
A. In answering this question, I will assume
that tlie Court will construe these claims as being
of sufficient scope to define the defendant’s method
as specifically practiced, as well as the specific
method set forth in detail in the Miller & Aylsworth
specification. '
2Q In accordance with the Miller & Aylsworth pat¬
ent the molten wax-like material is cast in. the
interior of a cylindrical mold, and after the casting,
and while the material is still within the mold, the
interior of the wax-like material is finished by
boring or reaming it out to the desired shape.
After the finishing or reaming operation, the nibbl¬
ed record is shrunk away from the metal mold and
is withdrawn endwise. The finishing or reaming
is done while the molded material is still in the
30 soft or plastic condition. Hence, the cylindrical
metal mold or matrix not only serves to give the
desired contour to the sound groove formed in the
molded record, ns a result of the casting operation,
but it also serves to support the molten material
during the reaming or finishing operation. Owing
to the finishing or reaming being (lone while the
molten material is within the mold and. is still soft,
the finishing operation is easily carried out and
without any danger of cracking or breaking the
40 record; and the entire operation is carried out
Arthur S. Jirownc. 449
quickly. Now, I fail to find in the prior art any
instance of thus reaming or finishing the interior
of a sound record, while it is still within the metal
mold or matrix into which the wax-like material
has been cast.
I will briefly refer to the various patents refer¬
red to by Mr. Massie in this connection.
Wilder A Jo. 185, 1/5 J/, December 0, 1876. This jq
patent is for the manufacture of wooden tubs or
buckets, and comprises a hollow chuck in which the
staves are inserted and which holds the staves while
their interior surfaces are being turned smooth,
and while the “croze” is being cut. The “croze”
is the groove at the bottom of the staves in which
the head of the tub or bucket is secured. This lias
nothing to do with the manufacture of sound rec- ,
ords. There is no casting of material in a mold
for the purpose of giving character to the outer go
surface; and no finishing or reaming out of the
interior of such molten material, and particularly
when such molten material is still soft. The Wil¬
der patent is entirely foreign to the phonographic
•150 Arthur S. Browne.
operation is such Unit the mix body of the blank
does not melt” (line 3G). The molded blank, after
removal from the mold, is first reamed out on its
interior or boro and is, by a second operation,
reamed or finished on its exterior. Concerning the
operation of reaming out or finishing the interior
or bore of tbc blank, tbc specification says:
10 “For the heated cutting tool I employ, first,
a tapering reamer, which is heated by the intro¬
duction of steam into its hollow body and is
revolved rapidly. The molded blank is pushed
onto this reamer and withdrawn from it by a
continuous motion of Hie hand, so that tbc
reamer by the combined cutting and beating
action turns out the bore of the blank to the
precise size desired.” (Lines 38-10.)
This is wholly different from the Miller & Aj'ls-
2o worth patent. Edison deals with a molded blank
and not with a molded record ; the heat employed
during the reaming operation is due to heating the
knives by special appliances for that purpose, and
is not due to the residual heat left in the molded
record as the result of the molding operation; and
Edison holds the molded blank in the hnnd and
manipulates it back and forth during the reaming
operation, instead of using the mold in which the
record is cast as the support during the reaming
30 or finishing operation.
Manifestly, this.Edison patent docs not disclose
the Miller & Aylswortli method, nor does it con¬
tain anything suggestive.
Edison No. 808,408, Nov. 27, 188S. This pntent
simply discloses the apparatus for reaming out
tlie molded blank which is used in carrying out the
, method of the Edison patent No. 393,402, just con-
40 sidered. The specification says :
"The hollow cylindrical wax phonogram-
blanks are taken in the band and are pushed
onto the reamer and withdrawn from it by
a continuous motion, the reamer being brought
up to the desired temperature and the com¬
bined action of heating and cutting rapidly and
smoothly reaming out the bore of the blank.”
(Lines 95-101.)
Hence, wlmt I have said with regard to the Edi¬
son pntent No. 393,402, applies equally to this Edi¬
son patent. In addition, this Edison patent, No.
393,4G2, says :
"The wax blanks are preferably heated by
a hot table, oven, or chamber approximately to
the temperature of the reamer before being cut
by the reamer, in order to prevent cracking by
unequal expansion.” (Line 102, page 1, lines
1-4, page 2.)
Edison thus contemplated heating the blank, but
by a separate heating operation. It did not occur
to him to utilize the heat in the molded blank, due
to the molding of the same, and while within the
mold. On the contrary, he took the blank out of
the mold and subsequently heated it by a separate
operation. This gets still farther away from the
Miller & Aylswortli process which not only avoids
any such separate heating of the molded record,
but also the heating of the cutting knives, and util¬
izes the mold' itself as a support for the record dur¬
ing reaming, instead of requiring the same to be
held by band.,
Edison No. 414,761, Nov. 12, 1SS0. This is like¬
wise for a blank, and noj; a record, and a spiral
rib is formed on the interior of the blnnk by mold¬
ing the blank material around a ribbed core, and
not by reaming out with a cutter. This patent
wholly lacks the characteristic feature of Miller &
Aylswortli, consistsing in reaming out the bore of
452
Arthur 8. Browne.
the molded record while still within the mold in
which it was east.
Lambert Xo. ft} 5,920, March SO, WOO. In this
patent there is no casting of molten wax-like ma¬
terial into a mold. The spec! flea! ion says: '
“I next take a soft ring of cellulose or vul-
10 ennised rubber, either in a raw or partially-
cured slate or previously softened with some
solution and of suflicienl thickness (o receive
in perfect form the indentations or the matrix
and at. the same time furnish a. suitable back¬
ing or support for the phonographic repro¬
duction of the record. This relatively tliiek-
ring nr tube is then placed within the cylin¬
drical opening of Ihe matrix and by means of
an expansive pressure with beat forced out¬
wardly, completely filling the matrix and
„n against the inner surface thereof, thus mak¬
ing a counterpart of the same and a record sim¬
ilar to that on the original wax cylinder. The
ring thus formed, having on its outer face a
faithful imprint of the matrix, is then allowed
to harden, either naturally or by artificially
curing the substance thereof, through which
hardening it shrinks sumciently to enable its
subsequent removal to be made from the mat-
page 1; lines M l, page 2.) ’
30 There is no casting of wax-like material within
the mold in this patent, but. instead a previously
formed and shaped ring of cellulose or rubber is
inserted into the mold, and when softened by heat
is forced outwardly in contact with the mold.
There is nothing to indicate that this outward
forcing in any way affects the character of the
ring of cellulose or rubber. There is no suggestion
for finishing the interior or bore of a sound record,
which lias been molded by casting, and while still
10 within the mold.
Edison Xo. Gb7,662, Ecb. 5, 1901. In accordance
witli this patent the molded records are withdrawn
from the mold after being made in the manner de¬
scribed. The specification says:
“The resulting duplicates thus secured after
'reaching the normal temperature are properly
dressed at the ends anil an i 1 t lly
to the proper size, being then ready for use.”
(Page 2, line 110.)
Edison thus reams out a cold sound record after
it lias been removed from the mold ; and does not
renin out or finish the bore while the molded rec¬
ord is still soft and within the mold.
Edison Xo. 713£09, Xoo. 11, 1902. In accord¬
ance with this patent a cylindrical blank is placed
within a mold and is then expanded outwardly by
a mandrel. There is nothing to indicate that the
forcing action of the mandrel has a finishing action
on the interior of the previously formed blank.
There is no suggestion for finishing the interior
bore of a molded record while still within the mold,
in which it has been cast.
Joyce Xo. S31,GGS, Sept. 25, 190G. This patent
I have already discussed at length. The spccifica-'
tion says that after the wax has been poured into
the mold it will generally have the exact form of
the mold when cooled, “but under certain circum¬
stances the wax cast may be subjected to pressure
in any of the usual ways.” (Page 2, line 4.) The
specification then says:
“A hydraulic-pneumatic or other pressure
may be applied to the wax column ns is done
in casting metal. A good way to apply pres¬
sure, however, is to wait until the wax is part¬
ly set and then screw down the tapering core
into its base I. This not only compresses, but
expands the wax outwnrdly insuring that all
parts of the mold are impressed into and re-
454 Arthur 8. lirowiiv.
produced by the wax.” (l'age 2, Hues 5-9.)
No finishing is thus done to the interior or core
of the molded record.
Mr. Mussic also refers to the two Macdonald pat¬
ents, dated September 17, 1901, No. 0S2,991 and
No. CS2,992, but I do not understand that lie refers
to these as a part of the prior art (as their applica-
10 tion dates are later than that of the Miller & Ayls-
wortli patent in suit No. GS3,U15), but simply us
illustrative of certain steps used by the defendant
in making the sound duplicate records. However,
neither of these patents shows the finishing of the
interior of the core of the duplicate sound record,
as a special operation following the casting of the
wax-like material in the mold and while still in
the mold. In these Macdonald patents the interior
of tlie molded record is given form as the result
20 of the casting operation itself, in this respect, so
far as concurrent interior shaping and exterior
molding are concerned, resembling the modified
method of the Joyce patent No. 831, GGS, just re¬
ferred to, and the method of the Edison patent No.
713,209, and of the Lambert patent, No. G45,920,
wherein the internal pressure applied within tlie
hollow record is a part of the operation of obtain-
Arthur S. Brc
reproducing machine; the interior finish is accom¬
plished when the sound record is adequately sup¬
ported and while the material may still be soft,
so as to insure easy cutting without danger of
breaking or splitting tlie sound record; and the
operation is simplified, since there is no intermedi¬
ate handling of the sound record itself, apart from
its mold between the casting and tlie finishing.
Q. 14. 1 direct your attention to the testimony
of Mr. L. Seward Macon, on behalf of complainant,
and of Mr. Mnssic, on behalf of the defendant, in
the comparison of the process practiced by the de¬
fendant, and that defined in Claims 3, 4 and 5 of
the Miller & Aylswortli patent in suit, No. GS3,G15.
Please consider the conclusions of these gentlemen
and state whether or not you agree with either of
A.' I agree with Mr. Bacon that defendant prac¬
tices the process defined in these claims, and 1
find nothing in the prior art or in the reasons given
by Mr. Massie which leads to the different conclu¬
sions reached by him.
As I understand Mr. Massie, lie distinguishes the
two methods because in Miller & Aylswortli the
casting step is specifically different from the cast¬
ing step employed by tiie defendant. Miller &
Aylswortli specifically describe lowering a cold
mold, open at its bottom, into a bath of molten
wax-like material, which flows upwardly into the
interior of the mold, chilling and accumulating
therein until the desired thickness of material Is
formed, whereupon the mold is withdrawn with the
molded material adhering to the interior thereof,
and partly congealed. On the other hand, in the
defendant’s manufacture, a mold closed at the bot¬
tom and having an interior core, is immersed into
tlie molten bath of wax-like material, so that the
mpltcn material flows down through the open top
ami fills the space between the mold and core. The
mold remains immersed until it is heated by the
bath of molten wax. When the mold is withdrawn
filled with wax, .both the mold and wax are hot
and the wax is in a molten condition. Also, Miller
& Aylsworth melt the wax only a little (20 to 40
degrees F.) above the melting point of the wax,
and the immersion of the mold docs not last long
10 enough to allow its temperature to be raised suf¬
ficiently to permit the deposited molten material
thereon to become rcmclted, the mold being sliield-
aut’s manufacture, the wax is superheated many
degrees above ils melting point, and the mold is
permitted to remain immersed until it is of sub¬
stantially the temperature of the bath of melted
20 The specific differences to which Mr. Massie re¬
fers exist, but none of them are called for by any
one of the pertinent claims of the patent in suit,
except as may be inferred from the language used
in each of these three claims, which refers to im¬
mersing the molten wax-like material “whereby the
material will accumulate on the bore of the matrix
or mold and chill thereon in a layer of the desired
thickness.” This quoted language seems sufficient¬
ly comprehensive to define botli methods. Even,
30 however, should it be construed to mean that the
material congeals within the mold while the mold
is yet within the molten bath, nevertheless, the spe¬
cific method carried ont by the defendant is the
equivalent of the corresponding step in the Miller
& Aylsworth patent. The point of these Clnims is
that after the molding lms been done by casting the
molten wax-like material within the mold, and after
the casting operation is complete, the interior of
the molded record is shaped and finished, while
40 the record is still within the mold, this finishing
Arthur 8. • Jiroiaie.
457
being a separate operation independent of the cast¬
ing, and tiic formation of the sound groove by
casting; and in accordance with Claim ii, this fin¬
ishing is done while the cast record is still soft,
or before it lias become hard. This essential meth¬
od is carried out by the defendant, and defendant
differs from Miller & Aylsworth simply by a dif¬
ferent specific way of doing the casting; defend¬
ant’s specific ensling method being the equivalent 10
of the specific casting method used by Miller &
Aylsworth.
The differences, therefore, pointed out by Sir.
Massie do not affect the substantial resemblance,
but simply involve, ns to one step, the substitution
of an equivalent.
Q. 15. Please consider the patents referred to
by Mr. Massie in connection with the Aylsworth &
Miller patent in suit, No. 083,070, Oct. 1, 1901, and
state whether or not you find anything therein to 20
negative the novelty of the subject matter of Claims
G and 7 thereof.
A. 1‘find nothing in the patents referred to by
Mr. Massie negativing the novelty of the subject
matter of these Claims 0 and 7 of Aylsworth &
Miller patent in suit.
Tins patent is for apparatus used in carrying out
the process of Miller & Aylsworth patent, No. GS3,-
CIS, already considered. The point of these Claims
is that the mold lms a two-fold function ; it is used
with a casting means, so that a sound record is cast
therein, witli a sound groove on its exterior; and
tlie same mold serves as a support for the cast
record, while its interior is finished.
In accordance witli Claim 7, the mechanism em¬
ployed is such that the duplicate record is formed
on its interior witli “a series of concentric ribs of
gradually increasing diameters, from one end of
the duplicate to the other, whereby the duplicate 40
•158 Arthur 8. Jlrowne.
may be properly received upon n tapered mandrel.”
I will briefly consider the various patents re¬
ferral to by Mr. Massie.
1! run Her, No. 05, 67/ 5, Oct. 12, 1SG9. This patent
is for casting hollow toys out of readily molten
soft inetui by means of dipping a hollow, open-
bottom mold into the bath of molten soft metal.
10 There is no subsequent finishing of the interior.
Tlic mold is a divided one which otherwise the cast
articles could not be removed. There is nothing in
it to suggest tiie making of phonographic sound
records.
Wilder No. 185,05//, Dee. 5, 1S70. This patent
is for making tubs and buckets out of wooden
staves. There is no casting operation involved. I
have referred to this in answer to Q. 13. Mr. Massie
suggests, in answer to Q. IS, that ‘‘the cutting of
a plurality of grooves, leaving a plurality of con¬
centric rings would lie obvious if such concentric
rings were desired.” The purpose of a single
concentric groove in Wilder is to form a groove
for tiie bottom of the . tub or bucket. Mani¬
festly, there never could be any desire of making
a tub or bucket with a lot of concentric grooves on
its interior. However this may he, Wilder only
described forming one groove, and no one desiring
3Q to improve the phonographic art would think of
looking into the manufacture of wooden tubs or
buckets for information. There is 1 1 to
of using the same feature as a mold for casting
and forming nn exterior surface, and as a support
while reaming out or finishing the interior.
Miaou, No. 393/02 and 303// 63, Nov. 27, 1S8S.
I have discussed both of these patents in answer
to Q. 13. They simply disclose reaming out a
tapering bore of a previously molded blank, the
40 blank being lield in the hand. No concentric ribs
Arthur 8. Ilrowne. 459
are formed, and tiie finishing of the interior is not
accomplished while the ‘blank is in position within
the matrix or mold.
Edison, No. //1//,7U1, Nov. 12, 1SS9. I referred
to this patent in answer to Q. 13. In this case a
blank is formed and not a sound record. A core is
employed with a spiral groove, so that the melted
material poured iu the space between the smooth ]Q
mold and tiie core, gets, as a result of this casting
operation, an interior bore with a spiral rib. The
core is subsequently removed by unscrewing the
same from the blank. This operation is carried on
by the complainant herein iu making its blanks.
This patent wholly fails to disclose an apparatus
wherein a mold bus a two-fold office, namely, serv¬
ing to receive molten material so as to form a sound
groove on the exterior thereof; and secondly, serv¬
ing to support the molded sound record while its 2Q
interior is being finished. Also, it fails to show
any way for making the concentric ribs called for
by Claim 7 of the Aylsworth & Miller patent in
suit. In connection with the concentric ribs, Mr.
Massie, in answer to Q. IS, says :
“And Edison says : ‘I prefer to form a spiral
rib.’ This is a disclosure of ‘ribs’ in general
aud ‘spiral ribs’ in particular. The only inter¬
nal ribs other than spiral that would natur¬
ally occur to one are either longitudinal ribs or
concentric ribs. This same Edison patent like- 30
wise refers (near the top of the second column)
to reaming ant the interior of the phouograin-
blunks.” (Mr. Mosaic's italics.)
It docs not seem to me that any inference can
be drawn from this Edison patent, No. 414, 7G1, that
concentric ribs could he used. Nothing is said
about them, and mauifostly it would be impossible
to make concentric ribs by the plan shown in this
Edison patent, aud get the blank off from the core. 40
A spiral rib is possible, because the separation of
core and blank can be effected by unscrewing. Ob¬
viously, when the Edison specification says:
“I prefer to form a spiral rib on the interior
surface of the blank.” (Line 30.)
tlie preference is between the ribs ns contrasted
witli (lie “flanges or projections” mentioned at line
10 20. Manifestly, it would be possible, in accordance
witli the method of this patent to have separate
and del ached flanges or projections (as distin¬
guished from the spiral rib) which, if spirally ar¬
ranged, would permit the separation of the core
and blank. Also, it would he possible to have
longitudinal ribs, and still separate the core and
blank. But concentric ribs would be an impossi¬
bility, and hence cannot be inferred from an ex¬
pressed preference for a spiral rib..
20 Ktlkon, No. G(i7,<IU2, Feb. o, 1901. This patent
was referred to in my answer to Q. 13. It describes
no concentric internal ribs, and no finishing of
the ^interior of the record while still within the
These are all of the patents referred to by Mr
Massie. They show that it was new with Ayls-
wortli & Miller to provide a mold having a double
office, namely, to form a sound groove in the ex-
30 f.C1’10' s,lrf!lcc of record material, which is cast
therein; and second, to support the molded sound
record while, as a subsequent operation, its interior
is being finished.
It was also new with Aylsworth & Miller to fin-
mil the interior of the sound record with concentric
ribs. Tiiese characteristics are useful; are new;
and are used by both the complainant and by the
defendant. .
An , 1G' . Jl1; Massie> 118 1 understand, expresses
40 the opinion that aggregations and not combinations
Arthur 8. lirownc.
are recited in cacli of Claims 0 and 7 of the Ayls¬
worth & Miller patent in suit. Please state whether
or not you agree with Mr. Massie.
A. I do not. The essence of combination is co¬
operation; and to constitute an aggregation there
must be absence of co-operation. Jn the present
instance there is co-operation. The mold itself is
a connecting element between the devices which do
the molding and the devices which do the reaming 10
or interior shaving, and the resulting product has
a molded external sound groove and a finished in¬
terior. The mold is common to the two operations,
receiving the molten wax-like material during the
casting and supporting the molded material during
finishing.
Q. 17. Please consider (lie prior art referred to
bj' Mr. Massie in connection with the subject mat¬
ter of Claim 5 of the Aylsworth & Miller patent in
suit. No. 083,076, Oct. 1, 1001, and state whether 20
or not yon find anything therein to negative the
novelty of said subject matter.'
A. I do not find anything in the prior art re¬
ferred to by Mr. Massie to negative the novelty of
. the subject matter of Claim 5 of the Aylsworth &
Miller patent in suit.
The point of this Claim is an apparatus which
simultaneously obtains a sound groove on the cyl¬
indrical surface of the sound record ; and a desig- 30
nation on the end of the sound record which shall
indicate in visually intelligible characters the name
of the composition constituting the sound record.
As clearly shown in Fig. 1, the mold carries a disc
at one end containing the name characters, so that
the name and sound groove are simultaneously
molded, as a result of the casting operation.
Tlie only patents specifically referred to by Mr.
Massie were, I believe, Edison, No. 007,002, Feb. 5, 40
462 Arthur 8. lirowue.
1901, and Schuberth. No. 359,037, March 22, 1S87.
1SS7.
Adjourned until April 17, 190S.
Direct examination of Mr. BROWNE con¬
tinued.
Met pursuant to adjournment.
10 Present:
Counsel as before.
April 17, 1908.
Arthur 8. Itrowne.
463
sorts it into his press and shapes the solid soap
and puts lettering on one side only of the soap.
So far as the prior art is concerned, Miller &
Aylswortli were the first to ever provide apparatus
for putting a readable marking on the end of a
phonograph sound record ; and they were the first
to make such marking simultaneously with the pro¬
duction of the sound groove. This was new with
Aylswortli & Miller; is useful and desirable; and 10
is adopted by both complainant and defendant.
The real nttaek made by Mr. Massie on the sub¬
ject matter of Claim 5 of the Aylswortli & Miller
patent is the general denial that there was any act
of invention required in providing the molding ap¬
paratus with reverse lettering at one end, so that
readable markings are formed concurrently with
the formation of the sound record. The desirabil¬
ity of having each sound record bear a distinguish¬
ing readable mark must have been known from the 20
beginning of the art, but nobody pointed out appa¬
ratus for doing it before Aylswortli & Miller. More¬
over, the Aylswortli & Miller apparatus does not
call for indiscriminate marking, but for marking in
a particular way. It might well lie conceded that
the bald idea of putting an intelligible marking on
a sound record would be obvious; but tin's is not
all that Aylswortli & Stiller have done.- On the
contrary, they have provided apparatus for making
this marking on one end of the sound record.
This is of special utility, since the records most
conveniently stand on one end in the factory, there¬
by preserving tlieir sound surfaces from injury,
and by having the markings on the upper end, the
records are readily selected for assorting and pack¬
ing. Sroreovcr, the records nre packed anil sold in
suitable boxes with the marked end at the top, so
that they can be readily identified:
These considerations show an intelligent adapta- 40
tioii of means toward a particular end, having spe¬
cial utility in the manufacture of duplicate sound
records; and as novelty is present, the quality of
invention follows.
Hy Mr. Massie: The Inst statement of the
witness, referring (o the quality of invention
is objected to as incompetent on the ground
that the same is a p...u question of law.
Q. IS. I direct yonr attention to the testimony
of Mr. Tj. Seward Itncon on behalf of complainant,
and to Hr. Massie on hclialf of defendant in com¬
parison of the apparatus employed on behalf of de¬
fendant aiid that defined in Claims 5, 0 and 7 of
the Aylsworth & Miller apparatus patent in suit,
No. 0S3,fi75. Please consider the conclusions of
these gentlemen and state whether or not you agree
with either of them.
A. I agree with Mr. Itncon that defendant’s ap¬
paratus has the subject matter defined in the Claim
and X find nothing in the prior art, or in the reasons
given by Mr. Massie which leads to the different
conclusions reached by him.
Mr. Massie’s conclusions are reached upon spe¬
cific differences between the apparatus of defend¬
ant and of Aylsworth & Stiller, which are substan¬
tially the same differences which he urges in con¬
nection with the two methods and which I have dis¬
cussed in answer to Q. 14. These specific differ¬
ences relate to the details of the apparatus, whereby
the particular casting steps are performed. These
specific differences are not called for by the lan¬
guage of the pertinent claims, except insofar as
they may be involved in the interpretation of the
expression “means for depositing molten material
within the matrix or mold and upon said disc,” as
used in Claim 5, or the expression, “the means for
securing the deposit of a wax-like congnlable mn-
Arlhur S. Browne. 405
terial upon the bore of a matrix or mold,” as used
in Claims G and 7.
Mr. Massie contends that these words “deposit¬
ing” and “deposit” identify the particular casting
method employed by Aylsworth & Miller, and hence
the particular construction of the apparatus which
permits this particular method to be carried out.
On the other hand, it seems to me these words are
comprehensive in their character and as generic 10
as any words which might be selected competent
to define both methods. Assuming, however, that
Mr. Mnssic’s interpretation of these words is cor¬
rect, nevertheless in this respect the specific means
The point of Claim 5 is that the mold is of such
character that the material cast therein simulta¬
neously gets a sound groove on its cylindrical sur- 20
face and a readable marking on one end; the point
of Claim G is that the same mold serves at one stage
of the operation to receive the molten material cast
into it, and at another stage of the operation to sup¬
port the molten material while being finished on its
interior; and the additional point of Claim 7 over -
what is recited in Claim 0 is that the apparatus
forms concentric ribs of gradually increasing diam¬
eter from one end of the duplicate to the other on
its interior. These characteristic features were new 30
witli Aylsworth & Miller and are present in defend¬
ant’s apparatus.
Complainant’s counsel offers in evidence the va¬
rious publications and patents referred to by the
Witness Browne, during his direct examination,
and it is stipulated that the three books referred
to were published upon the dates recited in their
title pages, that the various patents were issued 40
460 Arthur S. Browne.
upon the (lilies uppciiring on their faces, upon ap¬
plications filed on their respective dates recited in
each patent, subject to correction for error upon
due notice.
It is further stipulated (lint the hooks offered in
evidence may remain in the possession of complain¬
ant’s counsel, to be produced if called for upon rea¬
sonable notice.
10 The exhibits are now marked “Complainant’s Ex¬
hibits” with the following respective designation :
^ISrannt — Manufacture of Soap & Candles —
Carpenter — Soap and Candles — 1SS5;
Ott — Soap and Candles, 1867;
Edison British patent No. 1614 of April 24.
1S7S;
Edison patent No. 200,521, Feb. 8, 1S7S;
Hell & Ta inter patent No. 341,214, Mnv 4.
1SS6; ’
20 Tninter patent No. 341, 2S7, May 4, 18S6;
Tninter patent No. 341, 2SS, May 4, 1SS6;
Edison patent No. 3S2,411), May 4, 1S86;
Edison patent .No. 3S2,402, May S, 1SSS;
Herrington patent No. 399,264, March 12,
18S9 ;
Herrington patent No. 399,265, March 12,
18S9; ’ ’
Edison patent No. 430,274, June 17, 1890;
Douglass patent No. 475,490, May 24, 1892;
Hettini patent No. 484,381, Dec. 20, 1S92;
Edison patent No. 4S4.582, Oct. 18, 1892;
Edison patent No. 484, 5S4, Oct. 18, 1892;
Amet patent No. 539,212, May 14, 1895;
Amet patent No. 545,439, Sept. 3, 1895;
Macdonald patent No. 559,806, May 12, 1896;
Aylsworth patent No. 782,375, Feb. 14, 1905.
Ciioss-Exam ixatiox.
Without waiving the objections heretofore en¬
tered, Mr. Mnssie cross-examines ns follows, any
cross-examination upon the mntters objected to be-
40 ing do bene esse.
Arthur S. Browne.
467
x-Q. 19. You testified, did you not, as an expert
for the present defendant, the American Graplio-
phonc Company when it was a complainant against
the Edison Phonograph Works, charging infringe¬
ment of the Bell & Tninter graphoplionc patent, No.
341,214 and the Tninter graphoplionc patent, No.
341.2SS, both dated May 4, 1SSC?
A. Yes.
x-Q. 20. That about a dozen years ago, was it 10
not?
A. Yes.
x-Q. 21. In what patent suits relating to the
talking machine art have you given testimony since
then?
A: About the time of the suit by the American
Graphoplionc Company against the Edison Phono¬
graph Works I also testified on behalf of the Ameri¬
can Graphoplionc Company in a suit against the
United States Phonograph Company and others,
in which the Bell & Tninter and Taintcr patents,
above mentioned, were involved. Also, about the
same time I Itcstified on behalf of the American
Graphoplionc Company in a suit brought against
them on an Edison patent' for coin-operated talking
machines. Some time after that I testified for the
American Graphoplionc Company for a suit brought
on the same Bell & Taintcr patent agninst a de¬
fendant in Chicago, whose name I have forgotten.
I believe the defendant’s name was Amet. More re¬
cently I have testified for the Edison Company
against the Columbia Phonograph Company, Gen¬
eral, in a suit on the Aylsworth patent No. 782,875
on a composition used for making sound records.
Also, I have testified in a suit between the American
Graphophone Company and Smith on behalf of
Smith, involving a contract with reference to a
method of making duplicate sound records.
x-Q. 22. I cali your attention to the report of a
'Ifi8 Arthur 8. Browne.
case entitled American Grnphnphonc Company
against Amct on page 7S9 of Vol. 71, Fed. Hep.;
also to decree appearing page 100S of (lie same vol-
nine, both of which appear to lie dated April G,
1S9G. Is this the case yon referred to in the last an¬
swer as having a Chicago defendant?
A. I think so.
10 x-Q. 23. In answer to Q. G, under the heading
“Blank-making,” yon refer to the Edison patent No.
430,274, June 17, 1S90. So for as yon know has the
specific composition set forth in that patent ever
been used successfully and commercially? •
Arthur 8. Browne.
469
Joyce patent, that is without attempting to apply
what you may regard as the broad scope of Joyce’s
claims to more or less equivalent processes, so far
as you kuow, could the specific Joyce process dis¬
closed be employed with the specific composition of
the Edison patent No. 430,274, above referred to, to
produce satisfactory molded records?
A. I cannot say because I do not know what the
behavior of that particular Edison composition
would be.
x-Q. 2S. The same question with regard to the
specific composition of the Bell & Tainter patent
No. 341,214, namely beeswax and paraffine?
A. I cannot tell, because I do not know how that
beeswax and paraffine composition would act.
x-Q. 29. In a suit now pending between the
same parties here litigating it is testified to or ad¬
mitted by both parties that the regular record com¬
position in use about the period of 1S97 was sub¬
stantially the composition disclosed in the Mac¬
donald patent No. GOG, 725, July 5, 1S98 (appli¬
cation filed April 27, 1S9G). Assuming tills to be
correct, could the specific steps and disclosures of
the Joyce patent in suit be used with that composi¬
tion to produce satisfactory molded records?
A. Yes, except that the records made of that
material would not today be regarded as satisfac¬
tory when compared with the records made from
the modern materials on account of the greater soft¬
ness aud hence lesser durability of the old material.
x-Q. 30, What is the authority for the answer
you have just given?
A. I have tried the Joyce process in connection
with the old composition witli successful results.
x-Q. 31. To what temperature did you raise the
mold; or are you now referring to what you have
stated in your answer to direct Q. G, under the head
of “Making Duplicate Masters”?
470 Arthur 8. Browne.
A. In trying tlie Joyce process with the olil com¬
position, the mold was heated in the same manner
ns I stated in answer to Q. 0, relating to molding du¬
plicate masters. That is to say, the mold was heated
until the attendant told by wetting his Anger that
moisture would sizzle on the surface of the mold. In
the test of the temperature that I made, the indica¬
tion was that the mold was heated to something less
10 than the melting point of the soap composition.
The material was the same that is commercially
used by the complainant in making its blanks, that
material being the soap composition that 1ms long
been used by complainant and it was heated to the
usual temperature, which is about 320°F.
x-Q. 31. I understand that in the tests just re¬
ferred to you took an nnsplit cylindrical record
mold, having a core, and the ordinnry blank-mixture
used by complainant; and that with the exception
of first warming the mold ns stated by you, in all
other respects you carried out precisely the steps,
temperatures, etc., employed by complainants in
making their blank cylinders?
A. Yes, except that the steps were not the same.
In making the ordinary blank composition, there
is no chilling of the mold. In making the blanks,
the mold is pulled off while the mntcrinl is still soft
and warm and the spirally threaded core is un-
gg screwed, while the material is still soft and warm.
In testing the Joyce process with the blank mate¬
rial, the procedure was followed ns Specified by me
in answer to Q. 0, under the heading “Making Du¬
plicate Masters.”
x-Q. 32. There is testimony in the record ns to
the temperature given the mntcrinl by complainant
in molding duplicate masters; hut there is no testi¬
mony heretofore given as to the temperature cm-
: ployed by complainant in molding its blank cylin-
40 dors. You have said it is about 320<>F. Are you
Arthur 8. Browne. 471
testifying from actual observation, or from a gen¬
eral understanding and information?
A. From actual observation, subject to my
present recollection as to the temperature. I noted
the temperature at the time, and my recollection
is that it was 320°F.
x-Q. 33. In your answer to Q. 0 under the head¬
ing “Making Duplicate Masters,” you read the
temperature of the mold alter It had probably cooled 10
somewhat as249°F., and estimated that the working
teinxierature would be about 2(iO°F. In your
answer to x-Q. 31 you say it was “something less
than the inciting point of the soap composition.”
Do you mean about the same temperature iu'eacli
of those two answers?
A. Yes.
x-Q. 34. In the test made by you did you
slightly oil the mold and the core? 20
A. • I did on one occasion, nud was unable to
appreciate any difference in the product except
that perhaps when oil was used the surface ex¬
hibited a rather more polished appearance.
x-Q. 35. I understand that oil is not used in
complainant’s regular process of molding dupli¬
cate masters. That is so far as you have ob¬
served that process?
A. That is correct.
x-Q. 30. Iii carrying out your tests, did you
attempt to artificially chill the interior of the cast¬
ing or duplicate record?
A. No, except in so far as the core may have
been chilled by the immersion of the mold and
core in. the cold water.
x-Q. 37. That is, the core has no accessible in¬
terior for the entrance .of cold water; so that
whatever artificial cooling may have been applied
to the interior of the casting was due to conduction 40
of licat from the core to the base and other metal
parts that were actually in contact with cold
x-Q. 3S. I understand that your tests were car¬
ried out with the exhibit eutitled “Complainant’s
Exhibit Commercial Joyce Apparatus”?
A. With oue just like it. My recollection is
10 that this exhibit was the identical one used in
making itlic test with oil in the mold.
x-Q. 39. Was it known prior to Joyce's filing
date that the wax-like record composition then
in genera] use would shrink radially to a sufficient
amount to permit the ready withdrawal of the
casting from an unsplit cylindrical mold?
A. I do not know the facts in this particular.
x-Q. 40. (Mr. Massie interrupts and adds) :
2Q tIle 1101111 “casting” in the previous question, I
mean to include the sound-record existing in solid
shape within the mold whether formed by the
specific process of pouring melted wax or other¬
wise? ' '
A. Personally, I do not know the facts. I un¬
derstand, however, that there was a contest be¬
tween Edison and Joyce as to the particular mat¬
ter now inquired of, and that Joyce conceded
priority to Edison. I understand, however, that
30 Edison’s plan was to take a previously molded
cylinder and to expand it by heat (aided possibly
by an interior mandrel) so ns to get the impres-
sion of the sound record of the mold, and then
utilize the ensuing contraction to permit endwise
separation of mold and record. .So far as I know
Joyce was the first to ascertain that there would
he a shrinkage between the cast melted material
passing from liquid to solid form sufficient to
permit endwise separation.
40 x-Q. 41. In your answer to Q. 9, particularly
Arthur S. Browne.
m
in the 7tli and Sth paragraphs thereof, you refer
to the prior art of molding or casting general
articles, before the advent of the talking machine.
What was the practice in regard to tiie time for
removing such castings, whether they were
candles or glass bottles or articles of metal?
A- The time or removal in molding candies
seems to have varied widely depending upon the
material and the particular method practiced.
In making metal eastings in sand, the sand is
not removed until the casting is sufficiently chilled
to maintain its form and not be affected by tile
removal of the same. This will depend upon the
size of the casting. I do not know that I can give
any time from observation or available literature.
In the case of casting glass in a metal mold the
mold can be removed very quickly after the cast
has been made— inside of a minute.
Also, iu casting soft metals in a split metallic
mold I should say from recollection, based on ob¬
servation that this can be done very quickly, de¬
pending upon tiie amount of metal in the mold to
convey away the heat. In some cases, iu less than
a minute.
x-Q. 42. I did not mean to inquire concerning
the actual time elapsing. The question is whether
in those other arts it was the practice not to sepa¬
rate the casting and the mold until tiie former had
become set and was not in any sense “semi¬
plastic”?
A. Yes.
x-Q. 43. In answer to Q. 0, you refer to the
Edison patent No. 414,701 of Nov. 12, 1889, as
illustrating the molding of blank phonograph
cylinders. What does this Edison 1889 patent
teach in- regard to the matter inquired of in the
two preceding questions, — that is, with regard to
474 Arthur S. Ilruimw.
when tho casting should be removed from the
A. The Edison patent does not state when the
separation should be effected.
x-Q. 44. Assuming that tin; art prior to talking
machines taught that in making castings, the cast¬
ing must be allowed to become set before it is re¬
moved from the mold, and assuming further that
10 this Edison patent of 1SS9 lias taught the public
how . to mold blank phonogram cylinders of the
wax-like soap composition, without changing the
teaching of the prior art with regard to the time
of. removal — what would the ordinary skilled
workman do with regard to when he should re¬
move his cast phonogram blank from the unsplit
mold of that Edison patent 414, 7G1?
A. He would, I think, experiment anil And out
the best practice. What has actually been done is to
separate the molded blank and core while the ma¬
terial is still soft and warm.
x-Q. 44. In your opinion, the practice just in¬
dicated by you would be an improvement and an
advance upon the disclosures of the Edison patent
No. 414, 7G1, would it not?
A. No, I think it would be the result merely
of practically trying the method.
x-Q. 45. Logically, the particular method
30 named in your answer to x-Q. 44 must be cither
identical with the particular method named in
x-Q. 42, or more or less different therefrom. I un¬
derstand you to admit that specifically the two arc
different; do you mean that the particular prac¬
tice named in answer to x-Q. 44, although different
specifically, is not an advance or an improvement,
but a stop bnckwards?
A. No. Nothing in the outside art referred
to in x-Q. 42 indicates when molded blank material
40 should be removed. The Edison patent No. 414,701
docs not state when the removal should take plac,
but leaves it to the judgment of the artisan prac¬
ticing the method. Hence, there is no standard in
the prior art to ascertain whether the removal
while still warm should be regarded either ns an
advance or a retrogression. It is different from
the practice in the remote arts.
x-Q. 4G. If the skilled workman had the mold
of that Edison patent No. 414,701 anil undertook 10
witli the ordinary record-composition of the period
around 189G-7 to mold phonograph blanks in ac¬
cordance with the instruction of that same Edison
patent, and if he should follow the practice of the
earlier casting arts anil should permit his casting
to become completely set and reach normal room
temperature, — would he have departed in any per-
ticular from the teachings of that Edison patent?
A. No, but I doubt if he could successfully re¬
move the core except by a large percentage of
breakage.
x-Q. 47. Assuming the cases where the castings
should not be broken, what would lie the shape
of the exterior of the easting from that Edison
mold and what would be the nature of its sur¬
face, if the casting had become completely cold
before removal?
A. I do not know. The general shape would un¬
doubtedly be cylindrical, and whether or not there
would be a smooth surface, I cannot tell without
trying it.
x-Q. 48. Have you road the depositions of
Macdonald and other employees of defendant here¬
in that were introduced into this case ns exhibits?
A. I was not aware that such depositions were
introduced.
x-Q. 49. Why would the exterior surface of the
casting be cylindrical or at least cylindrical in gen¬
eral shape? 40
47<! Arthur 8. Browne.
A. Because the mold is cylindrical.
x-Q. 50. Unless some other factor (such for in¬
stance as peculiarity of shrinkage, or the like)
should intervene, would not tile casting in thcroy
at least have the exact shape of the mold?
A. Yes.
x-Q. 51. And with the shine proviso, would
not the costing have an exceedingly smooth sur-
10 face, or a fairly smooth surface, or an irregular
surface, depending upon the condition of the sur¬
face of the mold?
A. I am unable to say. If, however, some
effect did not arise through the action of the ma¬
terial itself, as the result of the solidifying under
the stated conditions, I should say theoretically
that the molten material would have a smooth sur¬
face, and the surface would conform to an irreg-
2Q ular mold provided that the mold is not suffi¬
ciently irregular to interfere with the free with¬
drawal of the molded blank.
x-Q. 52. Was not the co-efficient of expansion
of the ordinary phonograph-material in common
use prior to Joyce’s tiling date fairly well known
to persons in this art?
A. I think so.
x-Q. 53. Without going into the precise figures
that composition contracts amply sufficient to
30 cause a clearance between the record-surface of a
record-mold, and the minute record-lines produced
m the costing, does it not?
A. It docs when the mold is artificially chilled
on the exterior. What would be the effect without
this artificial chilling, I am unable to say.
x-Q. 64. Referring to your statement towards
the close of the paragraph headed "Recording
Sounds” in answer to Q.C, where you name the
Edison British patent did you not testify in' the suit
40 upon the Bell & Tainter patent, named in x-Q. ID,
that the making of the “original” sound record in
a practical way is first disclosed by said Bell &
Tainter patent No. 314,214 and the Tainter patent
No. 341,288?
A. I do not recall what I then said, but it is a
fact that the first practical commercial successful
sound records were made in accordance with the
method and apparatus of the Bell & Tainter and
Tainter patents. The original Edison phonograph, 10
while it would record and reproduce sounds, (as I
recall very distinctly having heard one of them
about 187S or 1S79) nevertheless had not then
reached what I should regard ns a commercial
status because the tin-foil had to remain on the ma¬
chine where the record was made and after a rela¬
tively small number of repetitions the record
would become much distorted by the reproducing
stylus, so that the sounds became indistinct.
x-Q. 55. In the same Q. C, under the heading 20
“Sound Reproduction,” yon refer to the Edison
sapphire reproducing style. Did you not testify in
the former suit above referred to that the first
practical apparatus for reproducing sound, with
which sound records could be interchangeably cm-
ployed was disclosed by the said Bell & Tainter
patent?
A. I do not recall .wliat I said, but I understand
the fact to be as you now state it.
x-Q. 56. Is it your understanding that in the 30
quality of the product, the method practiced by '
complainant for producing its molded masters, far
surpasses complainant’s method for producing its
ultimate duplicates for the mnrket?
A. No, except in so far ns that greater care is
exercised in carrying out the process in making dun-
licatc masters.
x-Q. 57. Is it your opinion and understanding
that if the same care were taken in carrying out 40
478 Arthur ft. Browne.
the method described by complainant's rebuttal
witnesses for molding (lie musters, mid if exactly
the same care were taken by equally skillful work¬
men in carrying out (lie method described for mnk-
ing complainant’s ultimate records for the market,
and assuming the same composition used in each
case — then the product in each case would he ident¬
ical in quality with (lie product in the other case?
10 A. Yes.
x-Q. 58. Why then, do you understand that
complainant uses one process for molding its mas¬
ters and (lie other for molding its article for the
market, instead of merely having its most skilled
workmen for the former, and -the same process in
each case?
A. I am not advised as to the reasons. Possi¬
bly, because there may he greater uniformity in
20 result in the process followed in molding master
duplicates.
x-Q. 59. At the outset of your answer to Q. 0
you enumerate the six “chapters” ns I may call
them, in the production of the ultimate molded
record for the market; and at the end of that
answer you point out that the exigencies of this
art demand these elaborate and peculiar steps. Do
you understand that any of the steps employed (1)
in producing the blanks or, (2) in making the
30 original cut record, or (3) in making the metallic
molds for masters, or (5) in making the further
metallic molds for the commercial articles, arc set
forth in and by any claim here in suit?
A. No.
x-Q. GO. Do yon understand that any claim of
the Miller & Aylsworth process patent or of the
Aylsworth and Miller apparatus pntent here sued
on, recites or covers nny steps employed in (4) the
40J making of the molded masters?
Arthur JZ. Browne. 479
A. Not specifically, although they might he em¬
ployed in molding masters.
x-Q. Gl. I mu inquiring of the specific process
described by you in answer to Q. (i, under the head¬
ing “Jinking Duplicate Masters,” and .as dccribed
by complainant’s witness Shannon. If this specific
form of process is set forth by any claim (in suit) .
of the two patents just inquired of, please specify
such claim or claims. 10
A. The subject matter of claim, G of the Ayls¬
worth & Miller apparatus patent No. 083, G7G is
employed in nmkiiig the duplicate masters; but
none of the other pertinent claims of these two
patents is employed.
x-Q. G2. In making complainant’s molded mas¬
ters, what “means for finishing the interior of the
duplicate while the latter is in position within the
matrix or mold, substantially ns set forth” (in
claim 6 of the Aylsworth & Miller patent) is cm- 20
ployed?
A. A roaming knife is employed which reams
out the material of the molded masters, to bring
it to the desired interior shape.
x-Q. G3. In giving your answer, did you have in
mind the fact that complainant’s molded masters
have no interior rill, but the bore is a taper formed
by a straight edge?
A. Yes.
x-Q. G4. In your opinion do the mold and other
instrumentalities described by complainant’s wit¬
ness Shannon in his answer to Q. 3 and by yourself .
in your answer to Q. G, under the heading “Jinking
Duplicate Jfastcrs” constitute “means for securing
a deposit of a wax-like congulnbic material upon
the bore of a matrix or mold which carries the rep¬
resentation of the record to be duplicated” (be¬
ing a quotation from the same claim G of Ayls¬
worth & Miller) ? 40
‘180 Arthur 8. Browne.
Yes.
x-Q. G5. Is tlio step (G) of making tlie ultimate
commercial duplicate record, as set out in your
answer to Q. G,. covered or set forth in any claim
(in suit) of the Joyce patent?
A. No.
x-Q. GG. You have described the steps or pro-
cess employed by complainant in producing its
molded masters and you have likewise described
the steps or process complainant employes in mold¬
ing its commercial duplicates; which of these two
(specifically different) processes in your opinion
more nearly resembles the specific process de¬
scribed in this record as defendant’s process?
A. That is difficult to say, because in each case
there are resemblances and differences.
For example, in comparing the molded master
20 process practiced by complainant with defendant’s
process, .they are alike in that the molten material
is introduced into the top of the mold, and when
the mold is filled with material, both are hot. On
the other hand, the two methods differ because
complainant does not immerse the mold in the
molten wax, but pours the wax into the mold ;
and complainant does not apply the name to the
end of the master record and does not make any
concentric ribs on the interior. Tn these latter re-
30 spects, defendant’s method is more nearly like
complainant’s way of making the commercial-
duplicates.
Therefore, it is difllcnlt to compnre the resem¬
blances and differences ns to nearness.
x-Q. G7. Flense go hack for a moment to x-Q.
Gil and indicate the things named by Mr. Shan¬
non in answer to Q. 3 and by yourself in an¬
swer to Q. G that constitute the "means for se-
40 curing a deposit of wax-like congnlable material
Arthur 8. Broionc: 481
upon the bore of the matrix or mold,” as set forth
in the Aylsworth & Miller claim G?
A. Primarily these means include the mold and
the core with the attached bottom, and the remov¬
able top ring. Also, to get the molten wax-like
material into the mold involves a wax tank, means
for heating it, and some way of getting the mater¬
ial from the tank into the mold. The particular
means employed by complainnnt being a vessel with 10
a spout like a coffee pot.
x-Q. GS. Is any one of the things just named by
you dispensible, and if so, which?
A. Yes, the tea-pot 'might be omitted and the
mold immersed in the wax-like material, and the
separate top ring might probably be omitted.
x-Q. GO. AVitli these possible or probable excep¬
tions all of the things named in answer to x-Q. G7
are necessary, are they not, to constitute the
“means” inquired of in x-Q. G7? 20
A. Yes.
x-Q. 70. Could a duplicate sound record ob¬
tained by the “means” just enumerated, be allowed
to become completely set by reaching normal tem¬
perature, and then be subsequently reamed out by
the employment with a suitable reaming-knife of
chucks for holding the cylinder at the ends so as
not to impinge upon its record-surfnce?
A. I do not know; I should imagine it could bo
done, but probably with a Inrge percentage of 30
breakage.
x-Q. 71. Are you familiar with the testimony
given in these cases given by defendant’s witness,
Thomas H. Macdonald, particularly the portion
where he refers to the “finishing” of defendant’s
molded sound record?
A. I read his deposition a couple of months ago
but I do not recall distinctly what he said.
x-Q. 72. If a duplicate sound record should be 40
482
Arthur 8. Browne.
formed by pressing or expanding, under the influ¬
ence of hent, nn niuneltcd blnnk-cylinder within ti
tubular mold ( for instnuec ns described in the De¬
fendant’s Exhibit Edison patent No. 713,200) and
while still warm and not yet disengaged from its
mold, could its mold be used ns a chuck with a
straight edge reaming knife to renin out its inter¬
ior, — or with the particular form of reaming knife
10 shown in the Aylsworth & Miller patent in suit?
A. I think so, unless perhaps the expanding
process might require so thin a cylinder initially
that it would not stand any reaming which would
leave it sufficiently strong.
x-Q. 73. ' AVould the action of the renining-knifc,
or tlie process of reaming, lie any different in the
case just inquired of from the nction of the ream¬
ing knife and the process of rcnining described in
the two patents in suit?
20 A. No, assuming that reaming was pcrmissablc
by reason of the presence of a sufficient amount of
a record material.
x-Q. 74. Do you find that the particular
“means” set out in the Aylsworth & Miller patent
in suit, for forming the duplicate, in any way
affects or modifies the action of the renming knife,
so ns to cause it to act otherwise from what it
would act under the supposition of x-Q. 72?
30 A’ 'No'
x-Q. 75. Assuming that a cast or- otherwise
molded sound record obtained os, for instance, in
the Edison patent No. 713,200, could after removal
from its matrix lie successfully reamed out as sug¬
gested in my x-Q. 70,— assuming that to be the fact
would the action or operation of the “means” for
forming that record (whatever they might be), he
in any way affected or modified by the subsequent
action of the reaming-apparatus or tool?
40 A. No.
Arthur S. lire
483
x-Q. 7G. In the second paragraph of your
answer to Q. 9, you observe that the Edison patent
No. 382,462, of May 8, 1888, contains no suggestion
of how the molding was done. Why wns this
omitted?
A. I do not know why. Many patents are
taken out on mere untried paper projects.
x-Q. 77. Considering that this patontNo.382,4G2
shows a hollow cylinder composed of wax-like com¬
position, that these materials were well-known to
be fusible, and that Mr. Edison says. “I prefer to
mold the entire phonogram-blank of the one wax-
like compound * * •” —would it be a violent
assumption to understand that Mr. Edison contem¬
plated that the person to whom the patent was ad¬
dressed would read it as directing them to employ
a cylindrical mold with a central tapering bore?
A. No.
Adjourned to Saturday April 18, 1908.
Met pursuant to adjournment.
Cross-examination of the witness RROWNE con¬
tinued by Mr. Massie.
Present : '
Counsel as before.
April 18, 1908.
x-Q. 78. In your answer to Q. 9 in the eighth
paragraph thereof, you refer to the molding of glass
bottles in the molds, and say “lettering on glass
bottles is thus produced.” How is this lettering
produced, by what means or devices?
A. The interior of the mold is provided with
reverse lettering so that the glass flows into or is
blown into the same. •
x-Q. 79. Wns the same expedient well known
481 Arthur 8. Browne.
long; before the date of Aylswortli & Miller dote
of application in producing lettering on metal
castiflgs?
A. Yes.
x-Q. SO. I understand your position with re¬
spect to claim 5 in suit of the Aylesworth & Miller
apparatus patent to be that if this claim were
merely for nil apparatus for molding cylinder
10 records and at the same time producing the letter¬
ing thereon, there would be. nothing novel about
it; but that because the lettering is produced in
the particular place, namely, around the nnnular
upper end of the cylinder, so flint it can he readily
observed, and will not take up room intended for
the record-groove,— for this reason the claim in
your opinion sets forth a novel device or apparatus
which (also in your opinion) involves the qunlity
of “invention.” Have I correctly stated your
20 opinion?
A. Not quite. The latter part of your question
beginning with the word “because” "is correct. The
first portion of the question is not correct, because,
so far as that statement is concerned, I know of
nothing in the prior art showing lack of novelty.
On the other hand, as stntcd in my direct examina¬
tion, it is unnecessary to consider whether or not
such broad subject matter may or may not have
SO been new, since no such subject mutter is claimed
in the patent. Hence, for the purposes of this case,
such broad subject matter might well be conceded
to be void of any quality <jf invention without af¬
fecting the actual subject matter of claim 5.
x-Q. 81. Are you aware of the fact that long
before Aylswortli & Miller's filing date, it was the
common if not universal practice in producing
disc sound records to employ reverse lettering in
connection with metallic reverse, so that the record-
40 grooves and the lettering were simultaneously im-'
Arthur 8. Brotonc. 485
pressed upon the ultimate commercial article9
A. No.
x-Q. 82. Are you aware of the fact that for
years before Aylswortli & Miller’s filing date, it
Was a frequent practice to scratch or cut, or other¬
wise produce lettering around the annular end or
top of the cylindrical sound record?
A. No.
x-Q. 83. In the ninth paragraph of your answer 10
to Q. 9, you say “manifestly, the making of a sound
record by pressure is not applicable to materials
which must be rendered fluid before they can ell'ec-
ively conform to the sound record-surface * *
Why must the record-composition with which we
are here dealing be .of necessity rendered fluid be¬
fore it can effectively conform to the sound-record
surface? And, are you prepared to state as a mat¬
ter of fact that the composition must in truth be
rendered fluid before it can effectively conform to 20
the sound-record surface of its mold?
A. As to the statement made by- me in answer
to Q. 9, it seems to me obvious that a material which
is rendered liquid and is present in liquid form
within a mold, cannot be effectively expanded by
any internal pressure, such as is supplied by a
mandrel, for example. Internal pressure is un¬
necessary because the fluid itself is competent to
flow into and among the irregularities of its mold.
As to the second proposition in the question, 30
which involves the fluid material itself conform¬
ing to the mold surface, my view is that it is im¬
practicable if not wholly impossible for the ma¬
terial itself to perfectly conform to the interior
surface of the mold unless it is in a liquid condi¬
tion. I have never tried to find' what the effect
might be to introduce record material in a mold
in a soft but not liquid condition and then letting
it stay there to See what would happen. But, con- 40
480 . Arthur S. Itrownc.
sidering the fact (lint in nil casting methods, with
which I am familiar, either the material itself
must be brought to liquid form or some external
pressure must be brought to hear when the mater¬
ial is not in liquid form, I am of the opinion that
' one of the two plans must be adopted if any prac¬
tical results are to be obtained.
10 The answer is objected to as not responding
to the questions asked.
x-Q. S4. Are you familiar with the decision of
the United States Circuit Court of Appeals for the
Seventh Circuit in the case entitled National Phon¬
ograph Go. against Lambert Go. rendered Aug. 1,
1005, and reported in Vol. 142 of the Fed. Rep. at
page 104 thereof, to the effect among other things
that the National Phonograph Company had pro-
20 duccd from six thousand to eight thousand com¬
mercial duplicate phonograms by the pressing pro¬
cess of the Edison patent No. 713,209?
A. I am not familiar with such a decision. I
do not recall ever having seen the decision or that
I ever had any knowledge or information that
there was any such suit.
Defendant’s counsel gives notice that at the
hearing of these causes defendant will refer
30 to the above-entitled decision in the Federal
Reporter; and asks complainant’s counsel to
accept the reported decision in lieu of his cer¬
tified copy of the same, and of the decrees en¬
tered pursuant thereto.
By Mr. Dyer: Counsel for complainants is
willing that the decision as reported in the
Federal Reporter shall be taken in lieu of a
certified copy, subject to correction, but objects
to any reference to this case by defendant’s
counsel on the ground that the said decision
40 is incompetent, irrelevant and immaterial, and
Arthur S. lirownc.
the said cause was not between the same par¬
ties as the parties now in Court.
Defendant’s counsel here calls attention to
defendant’s exhibit, Edison Deposition.
x-Q. 85. Resuming the subject matter of x-Q. 83.
Is it not tile fact that the ordinary cylinder-mater¬
ial of the period of Joyce’s application (which I
believe all parties agree is substantially the soap
mixture of the Macdonald patent No. 60G, 725)
could be used in making successful molded dupli¬
cate sound records, with a continuous or unsplit
mold, by the pressing process of the Edison patent
No. 713,209 (involving heat and pressure) ; so that
it is not necessary, iu order to make molded sound
records that the material referred to m nst be rend¬
ered fluid?
A. I think compared with prior plans, earlier
in date than the invention of the said Edison
patent, that the pressing method of said Edison
patent would produce records in a manner which
comparatively speaking, were successful. Hence,
I do not think it absolutely necessary to render
the material liquid in order to get a useable record.
x-Q. SG. Referring still to the same passage
from your answer to Q. 9, is it your meaning that
iu the specific casting process, (where the material
has first been rendered fluid) it is not feasible to
apply pressure introducing the duplicate sound
record?
A. Yes, provided that pressure is an internal
pressure.
. x-Q. 87. What does ' the Joyce specification
teach the public with regard to the application of
internal pressure in producing duplicate sound
records by his casting process?
A. He sugegsts that after the wax “has partly
set” the tapering core may be screwed down so as
to give on expansive action. Manifestly, this could
not be done while the material still is liquid, since
such downward screwing would simply raise the
level of the liquid.
x-Q. SS. In applying the pressing process (such
for instance, as set forth in defendant’s exhibit
Edison Patent No. 713,209) is the application of
heat made use of?
A. Yes.
x-Q. S9. To wlmt extent should heat be applied
in the pressing process; that is, wlmt consistency
must the blank cylinder be given?
A. I do not know what the limitations in prac¬
tice may be. I should judge however, that the ma¬
terial would have to be brought to a plastic condi¬
tion.
x-Q. 90. Assuming that by the pressing process
molded sound records can be and have been ob-
taiued that the exact counterparts of the mold and
exact and correct duplicates or copies of the orig¬
inal sound record, must not the plasticity imparted
by the heat employed be sufficient to enable the
material to enter perfectly into every irregularity
of the matrix-surface of the mold?
A. Yes.
x-Q. 91. And on the same assumption, and
with the same conclusion just stated by you, does
the liquid (molten) material enter any more inti¬
mately or any more perfectly into the minute irreg¬
ularities of the matrix-surface of the mold?
A. No. •
x-Q. 92. Do you understand that Joyce was the
first to disclose the fact that the shrinkage of the
record-material was sufficient to effect a clearance
between the casting and the mold, sufficient for us
to take the casting out of the mold?
A. Yes, in case where the casting is formed by
Arthur S. liroimie. 489
introducing the material in liquid condition into
the mold.
x-Q. 93. But before Joyce’s dnte it was known,
was it not, that if the material had been introduced
into the mold iu the form of mi unlimited blank
cylinder fitting more or less snugly in the mold,
and the duplicate then formed by heat and pres¬
sure, then upon cooling the thus-molded duplicate
would shrink sufficiently to be taken out without
injury to its surface?
A. Based upon my own examination of the lit¬
erature of the art I should say no. If there were
any such knowledge, so far ns I am advised, it was
by Mr. Edison. and I do not know to what extent
the concession of priority by Mr. Joyce to Mr. Edi¬
son went.
x-Q. 94. Was it not known j’ears.prior to Joyce’s
date that you. could melt that same cylinder com¬
position, introduce it while still liquid into an un¬
split smooth-bored cylindrical mold, and then when
it had become cold, take it put of the mold, the
radial contraction being many times greater than
the maximum depth of any record groove found in
actual practice?
A. No, not that I am aware.
■ x-Q. 95. In Q. 10, j’ou refer to the precautions
taken on account of the longitudinal shrinkage of
the material. Does this behavior of the material
and these precautions have any pertinence with
regard to the patent iu suit or any claims here
sued on?
A. Yes, to the extent that the reproducing me¬
chanism used with the cast record should have a
pitch corresponding to the pitcii of the cast sound
groove.
x-Q. 96. Perhaps my question is not properly
formulated. Do the patents in suit make any dis¬
closure regarding this matter of having the orig-
mnl records of different, pitch, etc..; does the patent
in suit contribute anything to that particular
matter?
x-Q. OT. And eontrnrywi.se, does the fact of the
longitudinal shrinkage of the material and the con¬
sequent precaution fallen with regard to tlic coarse¬
ness of the pitch of the original cut sound record,
contribute anything to the novelty or patentability
Adjourned subject to agreement.
Orange, New Jersey, June 19, 1908.
Met pursuant to agreement.
491
Arthur S. lirowne.
shrinking a celluloid record out of a mold after
pressing it?
A. No, sir, there is no difficulty whatever.”
Do you or do you not agree with this testimony
given by Mr. Wurth?
A. Neither. I do not know what the action of cel-
culoid would he under the circumstances, and
hence cannot express any opinion ns to whether
Mr. Wurth is right or wrong. 1 11
x-Q. 99. In your answer to Q. S ( in the fifteenth
paragraph) you sny that Liorct (U. S. Patent No.
52S,273) does not get sufficient separation to slip
the celluloid duplicate out endwise, but only suffi¬
cient to free the celluloid duplicate from the mold,
so that the duplicate can be unscrewed from its
mold. How much contraction is necessary to free
a celluloid duplicate from its cylindrical mold
without permitting it to bo slipped out; and how 2Q
much contraction of said cylindrical celluloid
duplicate would be necessary to enable it not only to
be freed, but also slipped out of its record-mold?
A. Liorct discloses a peculiar system of record¬
ing and reproducing sound. He starts with a
scrcw-threadcd cylinder, such ns is shown in Fig,
1, and makes a record on it by vibrating through
sounds a style in contact with the sharp apices of
the screw threads, thus getting sound irregularities
as indicated at b in. Fig. 1. He then makes by a 30
galvano plastic method a cylinder such ns is shown
in Fig. 5, having on Its interior screw-threaded
grooves and sound irregularities. Ho then puts a cyl¬
inder of celluloid c within the internally grooved
cylinder, as indicated in Fig. 7. The whole is then
plunged in hot water, thereby softening the cel¬
luloid ring which is thereupon forced outwardly
by an internal mandrel, such ns shown nt a 2 in .
Fig. 8, thus causing the exterior of the celluloid
ring to conform not only to the sound irregular!- 40
492
I rtliiir 8. lire
ties, but also to the original spiral screw thread.
The patent gives no data upon which any esti¬
mate of the amounts can be based. The drawings
cannot be used as a criterion, because the specifica¬
tions says:.
“It may be further jpentioned that the
threads of the matrix are very flue in practice
10 and are very much exaggerated in the draw¬
ings to facilitate the illustrations.” (Pace 2
lines 124-127.) ^ ’
I do not know how deep the sound irregularities
might be in Lioret’s scheme of making them and
have no basis on which I can make an estimate.
. - — - niiu-L uiurer mienus
when he says that the threads of the matrix are very
flue in practice. He shows these threads much
deeper than the sound irregularities.
, The only thing which can be asserted with any
plausibility is that he did not get shrinkage enough
to remove the celluloid record endwise, because he
says that after making the celluloid record :
“I then plunge the whole into cold water
and the celluloid recovers its hardness and is
at the some time generally contracted suffl-
t0 P“'m,t tlle withdrawal of the
r!™, tlG mold"’ hy unscrewing it there-
fiom. If, however, the contraction of the ring
that nfH,ry uotsun'c*cutly greater- than
wnrmfi4! 1 ? u!’ tho mold may be slightly
SSSaSy* extclm,,y « ” ^ I
It seems from this that occasionally at least the
shrinkage was insufficient to free the celluloid from
dmwri ’ l6t al°“° PemitUug its end'vise with-
In view of the foregoing I am not able to answer
the question.
x-Q. 100. Can you assume the cylindrical record
Arthur 8. ftrownc.
493
mold of tho usual dimensions, having the spiral rec¬
ord ribs of the usual height, and can you assume
the average coefficient of expansion and contrac¬
tion of celluloid, and then answer the foregoing
question without any especial limitation to what
Lioret may have to say on the subject? That is, with
celluloid and such a record-mold, how will the
amount of radical contraction compare with the
depth of the record-grooves? 10
A. I could not make the assumptions mentioned,
but they would be inadequate, because furnishing
insufficient datn. It would bo necessary also to as¬
sume the depth of Lioret’s screw threads and also
to know- 'the coefficient of expansion of the material
of the matrix. -Lioret dips both his matrix and the
enclosed celluloid ring into hot water so that both
are heated. Accordingly, Inching these necessary
items, I nm unable to answer.
x-Q. 101. The question was not limited to the ^
Lioret patent. The coefficient of expansion of cop¬
per was well-known in 1S94 and earlier, was' it not;
and the record molds known at that date were or¬
dinarily copper, were they not?
A. Yes, ns to the knowledge of the coefficient of
expansion of copper. Whether or not record molds
at the date of the Lioret patent wore commonly
exclusively of copper, I do not know.
x-Q. 102. In the former Connecticut litigation 80
between .the same National Phonograph Company
and this defendant, on the Edison patent No. GG7,-
062, Mr. Jonas W. Aylsworth, testifying for tho
complainant at West Orange, N. J., on October 8,
1903, answered x-Q. Ill in the affirmative, the ques¬
tion and answer being ns follows :
“Ulx-Q. Among the methods of making
blanks with which you have been familiar is one
which consists in pouring melted wax into a
continuous cylindrical mold; allowing the wax 40
•|9‘1 Arthur S. Hrowiie.
■ to solidly, and then removing from the mold by
withdrawing it longitudinally '
A. Yes.”
In the same suit, and on the same date, in the
course of his answer to Q. 13, where lie wns nsked ns
to the changes in the processes of manufacture car¬
ried on by Hr. Edison’s phonograph manufactur¬
ing concerns, Mr. Aylsworth said:
10
“Some time around about 1805 they began
molding by withdrawing the blnnk from the
mold while it was hot and in asemi-plnstic con¬
dition.”
Have you any reason to doubt these statements?
A. I know nothing whatever about, the state¬
ments in question and have no renson either to
doubt or believe them.
20 x-Q. 102. In your answer to Q. 9 (lltli parn-
graph) you speak of the “irregular unsyinmctrical
molding surface” of Joyce’s mold. Please assume
two parallel operations; in one you have Joyce’s
cylindrical record-mold and in the other you have
a blank-mold having a smooth and polished cylin¬
drical bore; and you have, in melted condition, the
ordinary wax-like composition of the pnst ten years.
The two molds are heated to the temperature in-
30 “ t*le Joyce patent, as the temperature for
his mold, and each mold is filled with that molten
material. The two are allowed to stand until the
contents have solidified (and this may, if desired,
he hastened in each instance by a cold water bath) ;
and thereafter, when the contents have become set,
the castings are withdrawn from the two molds.
What difference in behavior will there be;’ what
difference in the amount of contraction radially;
and what difference will there be in the processes
40 carried out, and in the resulting articles?
The two processes differ only in the production
of the differing molds.
The two products would differ, since one would
be a sound record and (lie other a blank.
x-Q. 103. Tlie second paragraph of your answer
means, as I understand it, that the two processes
differ because in the one instance you obtain as the 10
result a sound record, and in the other you obtain
as the result a blank cylinder; hut that the steps
taken in encli process are identical?
A. No, the steps are not identical. One pro¬
cess involves tlie making of a mold with a smooth
interior surface while the other process involves
making a matrix mold with sound irregularities on
its bore.
x-Q. 104. Then, in order to differentiate be¬
tween the two instances, we have to include the 20
step of making the respective molds ns a part
of the respective iproccsses?
A. Yes.
x-Q. 105. Please assume the same parallel oper¬
ations indicated in x-Q. 102— except that the rec¬
ord-mold is heated ns already stated, while the
blnnk mold is taken at normal temperature. Please
state the differences in behavior, and in radial con¬
traction?
A. I should have to make one other nssump-
tion, namely that where the record-mold is heated
it is subsequently plunged into cold water for cool¬
ing, while in the other instnnee in making the
blanks there is no such plunging in cold water. I
am obliged to make these assumptions in order to
bring the two contrasting processes within my
knowledge.
On the basis of these assumptions, I do not know
whether there would be sufficient contraction in the 40
490 Arthur 8. Ilrowne.
case of tlie blanks to enable their withdrawal from
the molds lengthwise. My experience and observa¬
tions are limited to forcing the blanks out of the
molds while still somewhat soft, so that n rough
outer surface is produced which must be subse¬
quently smoothed off with a lathe before a record
is made .thereon. So far as I know to the contrary,
the shrinkage under such circumstances may in-
10 voire a clinging of the blank material to the inter¬
ior surface of the mold, the shrinkage, if any, mani¬
festing itself by a shrinkage away from the center.
On the other hand, when the matrix mold with its
sound irregularities is heated and it together with
the cast cylindrical record material is artificially
cooled by immersion in a bath of cold water, there
is a preliminary setting of the record material
against the matrix surface, followed by n shrinkage
2Q of the material, so that it enn he subsequently with¬
drawn endwise from the matrix. There is produced
a sound record having a smooth and polished sur¬
face, except for the accurately reproduced sound
groove. Hence to sum up the matter in making
the blanks, I do not know that there is any radial
contraction of the blank as a whole, whereas, in
making the sound records, there is a final radial
contraction sufficient to enable the sound records
to be withdrawn. In mnking the sound records
30 ^lc material behaves in the manner which I have
stated and T have no knowledge that such behavior
occurs in the making of the blanks.
x-Q. 10G. Assuming the same parallel instances
already inquired of; remembering that in each in¬
stance we have the same composition which has,
of course, a more or less definite coefficient of ex¬
pansion and contraction. And recalling that in.
each instance the ultimate temperature of the cast¬
ing is the same, this having been reached gradually
40 in the case of the blank, while it has been hastened
Arthur 8. Browne.
497
by the cold water bath in the case of the record,
does the application of the cold water bath increase
the actual amount of contraction?
A. I do not know and ' am not advised as to
wlmt the exact behavior of the blank might he when
made ns suggested. Materials of this character
hnvo different behaviors under different conditions.
Analogous instances are shown in the manufacture
of candles, which has been referred to in the rec¬
ord. I know that when the mold is heated and it
together with the cast composition are immersed
in cold water that: there is a preliminary clinging
of the cast material to the matrix surface which
is probably a material factor in producing the final
polished surface and the faithful reproduction of
tlie sound groove. This is followed by the radial
contraction which is sufficient to permit endwise
withdrawal. I think it probable that the metallic
mntrix mold loses its heat much more rapidly than
the record composition, and if this is so, then when
both are plunged in cold water tlie contraction of
the record mold would be more rapid than that of
the cast composition; nnd this may be largely in¬
strumental in effecting tlie quality and character
of tlie sound surface of the sound record.
In any event, I cannot compare this behavior
with tlie assumption concerning the making of
blanks, since my own knowledge of blank making is
when the blanks are pushed out by still clinging
to. the mold and while still warm and soft, so that
an unfinished surface is produced. Whether or not
this would be the case if allowed to cool I do not
know.
Whether or not 'the plunging in cold water re¬
sults in more or- loss radial contraction of the cast
record as a whole I do not know.
x-Q. 107. Joyce was not the first to use a con¬
tinuous (that is, unsplit) cylindrical record-mold,
was lie? I refer for instance, not only to the Liorct
patent No. 528,273, and the Young British patent,
but also to Mr. Edison's pressing process, ns set
forth, for instance, in tiie Edison patent No. 713,-
200, which I will remind you was allowed after an
interference with Joyce, in which the' latter con¬
ceded priority?
A. No, I believe that Joyce was not the first to
use a continuous metallic cylindrical matrix mold
for making duplicate sound records.
referred to the decision of the Court of Ap¬
peals for tiie Seventh Circuit in National Co.
against Lambert Co., reported in Vol. 142, of
tiie Federal Reporter at pnge 164, reference
being made particularly to tiie mention begin¬
ning at the bottom of pnge 165 thereof, to the
testimony of Mr. Edison, as to the practice of
the pressing system in making duplicate sound
records from cylindrical molds.
Complainant’s counsel agrees to the nse of
the report in the Federal Reporter instead of
the official record of this case, but objects to
any reference to the decision named by de¬
fendant’s counsel on the ground that the par¬
ties to that suit and the issues decided therein
are different from the parties and the issues
in the present suits.
By Mr. Mnssie: Defendant’s counsel relies
upon that reported decision not as res adjudi¬
cate. with reference to the present litigation,
but as an admission by the National Phono¬
graph Company and by Mr. Thomas A. Edison
that the pressing process substantially as die-
. closed in the Edison patent No. 713,209 was
practiced in this country ns early as 1891; and
as an admission by the same parties that the
duplicate sound records obtained thereby were
perfect as far as quality was concerned; an ad-
499
mission that the said process was carried out
successively.
. Counsel for complainants renci
tion to the use of the decision nnm
ed in the Federal Reporter for I
contemplated or for any purpose
the grounds already given.
his objec-
as report-
purposes
x-Q. 108. In your answer to Q. 9 (paragraph 3) to
you refer to the Joyce invention as representing “a
turning point in this art,” and yon add : “practi¬
cally, the old method has been superseded, and com¬
mercial duplicate records are to-day made by cast¬
ing molten material in a continuous mold.”
Do you regard the process set forth in the Miller
. & Aylsworth, and Aylsworth and Miller patents
here in suit as coming within the language last
quoted by me? And, if so, in your opinion is the
process of making duplicate records, ns set forth 20
in those patents, the process which you regard ns
the Joyce invention?
A. Yes, ns to the first branch of the question,
and no, as to the second.
x-Q. 109. Then, if it should be assumed that
prior to Joyce’s date, the world lind not succeeded
in obtaining duplicate sound records, by casting,
from unsplit cylindrical molds; and if now the
world has learned iiow to do this; yet Joyce (in
your opinion) discloses one means of getting the
result, while the two Miller & Aylsworth patents
disclose another and independent and distinct
means?
A. Yes.
x-Q. 110. In other words, am I right in saying
that Joyce does not disclose the only way of accom¬
plishing that result, viz., obtaining duplicate sound
records, by casting from nn unsplit cylindrical
mold? 40
Arlliut
Browne.
A. Yes.
x-Q. 111. When we speak of an invention being
a turning point in the art, ami refer to the results
accomplished, it would seem to indicate that pre¬
vious investigators had encountered difficulties and
obstacles and the “turning point” invention had re¬
moved or gotten around those obstacles.
I understand flint among the difficulties or ob-
10 stacles encountered' in producing duplicate sound
records by molding from an unsplit mold (whether
specifically by pressing or by casting) was the lia¬
bility to entrap air bubbles, and perhaps also some
peculiarity in shrinking. If I am correct, please
state by what means the Joyce spccilicution over¬
comes or removes such objection? And, also, by
what means the Hiller & Aylsworth patents over¬
come or remove such objection?
A. I do not know that (lie objections stated
have been encountered prior to the pntents in suit.
Also, I do not think the initial proposition made
in the quest ion is invariably true;
x-Q. 112. What then did you mean when to¬
wards the close of the third paragraph of your
answer to Q. 0, yon said “The Joyce invention rep¬
resents a turning point in the art?”
A. I understand that the practical commercial
way of making duplicate sound records prior to
30 was l'.V tl>c duplicate engraving machines.
Since the date of Joyce’s invention the practical
commercial way is to cast the molten sound record
material in a continuous cylindrical mold. This
change from one plan to the other I regard as a
turning point in the art.
It does not seem to me that the quality of Joyce’s
invention is affected- by the proposition as to- -wheth¬
er lie knew of the objections to the old duplicating
method or not; or whether he had encountered, any
40 difficulty himself in making cast records.
Arthur 8. Broionc.
501
Assuming, for illustration, that Joyce had no
•knowledge of liow duplicate records had been made,
and that he succeeded the first time trying, I do not
think that the quality of liis invention would have
been affected.
x-Q. 113. Eefei-ring to the first paragraph of
your auswer non-constat that the practical commer*
cial way now employed is Joyce’s invention. As¬
suming that before the date of Joyce’s invention, 10
the commercial manner of .making duplicates was
by means of the duplicating machine, such as in
the Macdonald duplicating patent No. ’559,800
(named by you near the end of Q. 7), it is also the
fact that since the date of Joyce’s invention, com¬
plainant’s have been making duplicate sound rec¬
ords in -a practical commercial way by means of the
process of the Miller & Aylsworth patent, which is
separate and distinct from Joyce’s invention. Is
this statement correct? 20
A. Yes.
x-Q. -114. Can you state wherein in your opinion
the “Joyce invention” involves the achievements of
such quality ns to rise to the dignity of “inven¬
tion?”
A. He did something to promote the progress
of the phonographic art. Prior to him there was no
known commercial way of making duplicate sound
records by casting molten record composition into
a continuous hollow cylindrical matrix. Hediscov- 30
ered that this could bo successfully done by having
botii matrix and material hot when the material
was within the matrix -and by then immersing both
in cold water. Since then -commercial duplicate
sound records have been chiefly innde by the cast¬
ing method. -This was new -and useful, and lienee
involved invention.
The fact 'that Joyce did not discover the only
way in which <the -costing operation could be per-
Arthur 8. Browne.
formed and did not get a claim sufficiently compre¬
hensive to cover all ways, does not detract from the
quality of his invention. Miller & Aylsworth have
since discovered a specifically different’ way of ac¬
complishing the same results, hut this does not de¬
tract from the merits of the Joyce performance.
x-Q. 115. 1 understand your position to he that
specillcally defendant’s process differs from that
claimed by Joyce in that Joyce prc-licats his mold,
whereas defendant does not; hut that in your opin¬
ion these two specifically differing processes are
equivalents. And that there is no valid reason in
the prior art why the doctrine of equivalence should
not he invoked in favor of the Joyce putent. Have
I correctly stated your views?
A. Yes, so far as your statement goes. I do not
think it necessary, however, to consider the ques¬
tion of equivalence in view of the Inngungc of the
pertinent claims of the Joyce patent, which say
nothing about any pre-heating of the mold.
x-Q. 11G. In giving your answer and in your an¬
swer to Q. 7, have you considered the tile wrapper
and contents, particularly the matters pointed out
in the Massic deposition in regard to the statements
made in the prosecution of the Joyce application,
concerning pre-heating?
A. Yes.
x-Q. 117. Please assume that in order to obtain
a successful result in casting duplicate sound rec¬
ords when the material is introduced into the top
of tiie cylindrical mold, that it is absolutely essen¬
tial that the mold and its contents must be heated
to a considerable temperature (say 150°F.) above
the molting point of the composition. Making this
assumption, please point out where, if at all, the
Joyce specification makes such a disclosure?
A. It is a little difficult for me to make an as¬
sumption which I know is not true, which is con¬
trary to my own observation. It seems to me like
inquiring how one could skate it ice was heavier
than water. Nevertheless, making the assumption,
then the Joyce patent does not state that the tem¬
perature should he any particular number of de¬
grees Fahrenheit above the melting point of the
composition, and certainly does not make a state¬
ment as to 150°F.
x-Q. 118. I will modify my hypothetical ques¬
tion. Assume that tiie court should find from the
evidence in these cases that in making cast sound
records, where the material is poured in at tiie top
that the temperature of the material and of the
mold should he about from 70 to 90 degrees F. above
the melting point of the material. Where, if . at
all, does the Joyce patent contain any such teach¬
ing?
A. It does not contain any specific statement
of temperature. It simply states that the mold
should he “heated, preferably, to near tiie tempera¬
ture of melted wax,” (page 1, line 102). 'It also
refers to the mold as being “hot” (line 105, page
1) and in several of the claims. '
“Near the temperature of melted wax” is per¬
haps ambiguous. It may mean either above or be¬
low the point at which the wax melts; or it may
mean that it should be either above or below the
temperature of the mass of molten wax. In either
event the suggestion is that the temperature should
be some where near tiie selected criterion. Without
having any other guide, therefore, in practicing the
process tiie artisan would try all four of the sug¬
gested temperatures. If he succeeded with any
one (assuming that there was only one at which lie
could succeed) the disclosure is adequate. As a
practical matter, the temperature of a hath of molt¬
en wax varies. As I recall, the record composition
reaches a fluid molten condition at about 290°F.
Iu order to maintain it certainly fluid, it would be
reasonable to maintain the temperature above that,
say, in tlio neighborhood of 320 or 330 degrees. Just
ns when an ice cream maker freezes cream, lie em¬
ploys something materially below the freezing point
of the cream.
Now, if a person trying the Joyce method found
that he bad gotten his best results by having tlie
10 temperature of the mold near the temperature of
the melted wax, and that that desirable tempera¬
ture was as high as three hundred and sixty de¬
grees or 375 degrees Fahrenheit, I would consider
that that excess was fairly within the meaning of
the language used in the Joyce specification. I
have selected the stated temperatures because they
would fall within the excessive temperature above
the point at which the wax becomes molten, given
in your ipiestion. Therefore, I should say under
the assumption of the question that while the Joyce
patent does not state temperatures in degrees Fah¬
renheit, yet, it is reasonably dcduciblc therefrom
that a temperature from 70 to 90 degrees Fahren¬
heit above the point at which the composition be¬
comes fluid through beat should be used.
By Mr. Mnssie: Defendant does not accept
as correct the statement as to the adequacy of
the disclosure when the artisan has to resort to
gg selective experiments.
x-Q. 119. Please assume that the Court should
construe the Joyce patent ns directing us to beat
the composition to a temperature only a few de¬
grees above its melting point, and to pre-heat the
mold to just a few degrees below the temperature
first indicated, so that the mold and tlie wax are of
substantially the same temperature. Upon this as¬
sumption if a mold be heated to a temperature 30°F
below the melting point of the composition, and
40 the latter bo heated to a temperature 70° above its
Arthur g. Bro
m
melting point, and thereafter the material be in¬
troduced into tlie mold, chilled, withdrawn, etc.;
lias the .process of the Joyce claims iu suit been car¬
ried out?
A. Yes. Even assuming that the Court should
make this specific finding ns to the disclosure, there
would be no justification iu tying the patent rigidly
down to the specific degree, since the specification
does not so tie it down, and the assumption in- 10
volves, as I understand, that records could he cast
and properly obtained if there should be the dif¬
ference of a hundred degrees between the mold and
tlie composition. •
There is nothing iu ’either specification or claims
■restricting either the •temperature of the melted Wax
or the temperature of the mold to any specific de¬
gree.
The Joyce patent refers to 'the pouring of the 20
melted wax, thus involving the wax being at a pour¬
ing temperature and containing absolutely nothing
to restrict the wax as to specific temperatures, so
that a still higher temperature would be excluded.
'So likewise with the temperature of the mold. It
is enough thnt it should be near the temperature of
■melting wax, no matter how that language may be
construed.
Therefore, for these rensons, I think the specific
inference assumed In the question would be a prac- 30
tice of the Joyce method.
x-Q. 120. Assume that the wax is at a tempera¬
ture of say 450 or even 425 degrees F., nnd .the mold
at normal temperature of about 70°F,;. and that on
account of its greater specific capacity for heat, the
wax should raise the temperature of the mold to say
225 degrees F. .(tlie melting point of the wax being
290°F.) has the .process of the Joyce claims been
carried out? , 40
COfi Arthur 8. Itroimw.
A. I do not know. I should have to test the
proposition before reaching a conclusion.
x-Q. 121. Do I state your views correctly in the
following propositions: The process of the Joyce
patent calls for a hot mold, but it is linninterinl
whether the mold he pre-hented or heated by the in¬
troduction of wax. In any case, the two must be
“of substantially the same temperature.”- And the
10 quoted words, the amount of dilTcrence of temper¬
ature permissible to fail within the claimed pro¬
cess, cannot he ascertained from the pntent itself,
but would depend upon whether or not the results
were useiflile sound records?
A. No. On the contrary, I think the permis¬
sible temperature can be obtained from the -pntent
itself. On the other hand, the pntent does not state
any limits of temperature beyond which the process
would not be feasible or practiced. I presume that
tlie heat of the mold might he increased or dimin¬
ished beyond useable temperatures and likewise
with respect to the wax.
The patent states the conditions under which the
process can be successfully practiced, but does not
• state the conditions under which it cannot he suc¬
cessfully practiced. That would have to lie found
out by experiment.
x-Q. 122. What I am getting at is this. In pour-
30 i'ig super-heated wax into ii so-called cold mold, the
temperature of Hint mold will lie raised. Now to
what maximum amount can the temperature of the
mold be raised without infringing the Joyce claims
here in suit?
A. I do not know. I should have to experiment
to reach a conclusion.
x-Q. 123. Please consider the Aylsworth & Mil¬
ter specific apparatus and the Miller & Aylhwortli
specific process (subordinating ns far as possible
40 the reaming knife and its use, so ns to consider
507
only tlie formation of the duplicate record). Can
the Aylsworth & Miller apparatus of Fig. 1 be
used in producing duplicate sound records, except
iu accordance with tlie Miller & Aylsworth process?
In this question, I am not referring to any matter
of scope of tlie claim, but to tlie apparatus and
process ns specifically described.
A. No.
x-Q. 124. In like manner, I ask you if the spe¬
cific process disclosed in the Miller & Aylsworth
patent could he carried out except by using a mold
haring its bottom opened and having its exterior
protected from heat? (as in the apparatus of Fig.
1 of the Aylsworth & Miller patent.)
A. I know of no other way of carrying out
the specific process.
x-Q. 125. Can the specific process of the Miller
& Aylsworth patent be carried out by the devices
shown in the drawings in the Macdonald reissued
patents No. 12,005 and 12,09G iu evidence herein?
A. No.
x-Q. 120. Cnii the specific process employed by
defendants he carried out by the specific apparatus
shown in Fig. 1 of the Aylsworth and Miller patent?
A. No.
- x-Q. 127. Can the specific process employed by
defendant he carried out by the specific apparatus
shown by the Macdonald reissue patent just in¬
quired of?
A. I do not know.
Mr. Massie announces thnt the cross-exam¬
ination of Mr. Browne is closed.
Adjourned to 10 :30 A. M. June 20, 1908.
Kd-Q. 131. Mr. Mosaic asked you (x-Q. 34) “in
the test made by you did you slightly oil the mold
and the core?” To which you replied that you did
so on one occasion. Have you preserved any of
the records made where the mold was oiled?
A. Yes, and I here produce it.
The record produced by the witness is of¬
fered in evidence mul marked “Complainants’ iq
Exhibit — -Record Made after oiling the Mold
and Core.”
By Mr. Mnssie : The objections are repeated.
Bd-Q. 132. From what source did you obtain
the material from which this material was made?
A. It was from the tank containing the molten
material then being used in the molding of mas¬
ter records in the ordinary commercial practice
of complainant’s factory. 20
Bd-Q. 133. Did you make any additional records
at that time which you have retained?
A. Yes, I here produce another record made
at that time.
The record last produced by the witness is
introduced in evidence and marked “Complain¬
ant’s Exhibit — Third Joyce Becord.”
By Mr. Massic: The title is objected to
as misleading and the exhibit is objected to
ns without pertinence or relevancy. 30
Rd-Q. 134. From what source did you obtain the
material for making this record?
A. From the vat of material used in the com¬
mercial manufacture of master records.
Rd-Q. 135. How, if at all, do you identify the
records above introduced into evidence?
A. I identify the light colored record “Com¬
plainant’s Exhibit — Record made from Ordinary
Blank Composition by Commercial Joyce Process” 40
Orange, N. J., June 20, 1908.
Met pursuant to adjournment.
Parties present as before.
Re-direct examination by Mr. DYKE :
Bd-Q. 12S. In making your answers co x-Q. 124,
10 x-Q. 125 and x-Q. 120, did you consider that tile
assumption of x-Q. 123 was carried forward into the
succeeding question?
By Mr. Mussie: Defendant’s counsel intend¬
ed the same assumption to he carried forward
into the three succeeding questions.
A. Yes.
Bd-Q. 129. In your answer to x-Q. 30, you stated
“I have tried the Joyce process in connection with
the old composition with successful results.” Did
20 you keep any of the records made at that time?
A. Yes. I here produce a record then made out
of the ordinary soap composition.
Rd-Q. 130. From wlmt source did you obtain the
material from which this exhibit is made?
A. It was tnken from the tank of matcrinl which
was then being used in making blanks in the ordin-
40 ary course of business in complainant’s factory.
Arthur 8. Browne.
The record produced by the witness is in¬
troduced in evidence and marked “Complain¬
ants’ Exhibit, Becord Made from ‘Ordinary
Blank Composition by Commercial Joyce Pro-
By Mr. Mnssie: The exhibit is objected to
as not relevant or pertinent, since the process
the witness has described in connection with
the exhibit, is not the process described in the
Joyce patent in suit. And the title given the
exhibit is objected to as misleading on the same
grounds.
Sio Arthur 8. Browne.
by its color.
I identify “Coniplniimnt’s Exhibit — Record Made
After Oiling (lie .Mold and Core” because it wns
made in “Complainant’s Exhibit Commercial Joyce
Apparatus,” the record cylinder of which is marked
“Dancing with 31a Itaby,” and on placing the rec¬
ord in a phonograph, this title is nudibly sounded.
I identify the remaining exhibit “Complainant’s
Exhibit Third Joyce Kecord,” because I preserved
these three records, and this is the third one.
Re-direct examination closed.
Recross examination by Mr. 3IASSIE:
Rx-Q. 130. What have you to say, if anything,
as to the surface appearance of the three records
just introduced as indicating the presence of oil?
A. The black records have a more .polished ap¬
pearance than the light colored one. It seems to me
that the black record made with the oiled mold has
a more polished appearance than the other, though
the difference is not marked. Both inny he somewhat
dulled since originally made, but when both were
freshly made from the oiled mold they seemed to
me to be appreciably more polished in nppearnnee.
Rx-Q. 137. Tile one of the two black ones which
to your eye appears the most polished of the three
is the article having squared ends and not beveled
at either end, which is identified ns “Record 3tnde
After Oiling 31old and Core.” While the “Third
Joyce Record” (having one end somewhat beveled)
is to your eye more polished than the white record?
A. Yes.
Deposition closed.
ARTHUR S. BROWNE.
Certificate waived.
Arthur S. Bra
511
STIPULATION, JUNE 23, 1908.
It is stipulated and agreed by and between the
parties to these suits that the Edison Phonograph
Works, from a period earlier than 1895 and during
the years 1895, 189G, 1897 and 1898, made cylindri¬
cal sound-records and also blank cylinders for re¬
cording purposes, from a composition substantially
that disclosed in formula B in the 3racdonald pat¬
ent No. (500,725, and sold and offered the same for
sale throughout the United States during that pe¬
riod; and that during the years 1895, 189G, 1897
and 1898 the defendant manufactured cylindrical
sound-records, and also blank cylinders for record¬
ing purposes from substantially the same composi¬
tion, which were sold and offered for sale through¬
out the United States during that period, by the
Columbia Phonograph Company, the sales agent
of defendant; and that any records or blanks, or
pieces of records or blanks, which were obtained by
Slaurice Joyce from the store of the Columbia
Phonograph Company, at Washington, D. C., with¬
in that period, were made from the said composi¬
tion ; but that the composition itself was not other¬
wise for sale and was not otherwise sold (except in
the form of sound-records and blank cylinders) ;
and that the nature of the said composition and the
process of manufacturing the same were not known
to the public and were first disclosed to the public
upon the issuance of the said 3Iacdonald patent
No. GOO, 725, on July 5, 1898.
PRANK L. DYER,
Of Counsel for Complainants.
By Mr. Mnssic: —
Defendant’s counsel objects to the taking of any
further rebuttal testimony at this time, on the
ground that the time for taking rebuttal testimony
herein 1ms expired, and that complainants’ proofs
are already constructively closed. The attendance
by defendant’s counsel is without waiver of tliis
objection and any cross-examination will be de
bene esse only.
Complainants’ counsel replies that the rebuttal
proofs in these cases have not been closed and that
the times heretofore set by order of the court for
taking testimony in these cases have been extended
by consent of counsel, defendants’ answering testi¬
mony having been taken subsequent to the time so
set by virtue of such stipulation, and that the time
for taking rebuttal testimony lias not, therefore,
expired.
DEPOSITION OF ROBERT FLETCHER
ROGERS.
ROBERT FLETCHER ROGERS, a witness pro¬
duced on behalf of complainants, being first' duly
sworn, deposes and says in answer to interroga¬
tories propounded by Mr. Dyke, as follows :
Q-l Give your name, age, residence and occupa¬
tion?
A Robert Fletcher Rogers, attorney at law, 45
Broadway, New York City, legal age.
Q-2 Have you an acquaintance with Mr. Mau¬
rice Joyce, the printer and engraver of Washing¬
ton, D. C., who has testified in these suits?
A I believe I met Mr. Joyce, or lmd some com¬
munication witli him some years ago.
Q-3 Do you remember having had any commu¬
nication with him respecting any duplicate phono¬
graph records?
tt M .. .
' . ■ ' ;
614
A I remember at one time at the instance of
Mr. Stilson Hutchins, of Washington, D. 0., hav¬
ing some communication with Mr. Joyce, and at
his request I sent or delivered to Mr. Easton, of
the American Grnphophonc Company, a record
which lie wished to be passed upon by that com¬
pany. The best of my recollection is that this rec¬
ord was subsequently* returned to me.
Q-4 Where is that record now, if you know?
A To the best of my knowledge and belief, I
have it here and now produce it. I think it was not
returned to Mr. Joyce and that it has been in the
office here since that date. I now produce a record
which I believe to be the one in question.
Tiie record produced by the witness is intro¬
duced in evidence and the Examiner is request¬
ed to mark the same “Complainants’ Exhibit,
Early Joyce Record.”
By Mr. Massie:
, The exhibit is objected to ns irrelevant and
immaterial and as not sufficiently identified.
It is further objected that the designation given
it by complainants’ counsel is without proper
basis. 1 1
Q-5 I hand you two papers and ask you to state
what these are, if you know?
A These two papers which arc marked respec¬
tively “Complainants’ Exhibit, Easton’s Letter to
Rogers, July 9, 1898,” and “Complainants’ Exhibit,
Robert Fletcher Rogers’s letter to Joyce, July 6,
1898,” nre unquestionably a portion of the corre¬
spondence in the transactions I had at the time.
I clearly identify the exhibit marked "Complain¬
ants’ Exhibit, Robert Fletcher Rogers’ Letter to
Joyce, July 5, 1898,” as a letter signed and un¬
questionably sent by me to Maurice Joyce, whose
name appears thereon, and I recognize the other
exhibit marked “Complainants’ Exhibit, Easton’s
Letter to Rogers, July 9, 1898,” as a portion of the
same transactions. I have a distinct recollection
that such a letter was sent to me by Mr. Easton,
and its inspection at this time amply confirms my
recollection, nlthough I should not have been able
to have stated its precise contents without having
seen it. I do recollect, however, without seeing the
letter that its general trend was the same as that
set forth in the letter.
Q-G Have you any further records relative to
this transaction of which you know?
A I do not know of any such records at the
present time and regard it as doubtful. It is pos¬
sible that there may be some letters in my files, but
I regard it as improbable, for the reason , that it
was not a matter I was very much interested in,
either professionally or in any other way.
Q-7 Do you consider that if such records were
found they would add anything to the record of the
transaction?
By Mr. Massie:
Objected to as incompetent.
A My belief is that the two letters which you
showed me indicate very clearly precisely just what
occurred at the time. My recollections of the mat¬
ter correspond to this showing. Of course, I could
not say what other letters might show, but I regard
it as very doubtful that there are any other letters.
The mere fact that’l sent the original Easton letter
to Mr. Joyce would indicate that it was not a mat¬
ter in which I was very much interested.
Q-8 Will you please examine your files and as¬
certain if you have there any further correspond¬
ence relative to this matter?
A (Witness examines files). I have examined
my files and find a letter dated July 6, 1898, writ¬
ten to me and signed by Andrew Devine, which let-
Q-10 Have you looked for the letter referred to
in your letter to Joyce, which is in evidence herein,
as Ills letter of the “29th ult.,” to which your letter
appears to be an answer?
A I have looked for it ns far as I can. I have
not been able to iind it in any of the files which I
thought would most likely contain it.
Direct examination closed!
CROSS-EXAMINATION by Mr. Massie, with¬
out waiving the objections already entered.
ter is largely personal, and relates to other and
confidential matters. This letter is dated Mada-
wnska Island, Ivy Lea Postofllce, Ontario, Canada.
The only pertinent matter therein is in the follow¬
ing words:
“By this mail I write to our ofilce about the
Misco business and the Joyce Cylinder, and if
you do not hear from there in a day or two,
please go down and see Mr. Smith or Mr.
Cromelin or Mr. Easton. Of course I would
like to be present at the exhibition or exhibi¬
tions, but the others can judge at least ns well
as I could.”
XQ-11 Is it not a fact that the two exhibit let¬
ters and the Devine letter set forth practically all
that you recollect concerning this Joyce transac¬
tion, and that you recollect nothing beyond what
appears in those three letters?
A Substantially nothing more than that. I
have a recollection that the cylinder was to be
formed in a master matrix, but I am unable at this
time to give you the details of the process.
XQ-12 Are you able to state as a fact whether
or not the cylindrical article which you have pro¬
duced in your direct examination is a sound rec¬
ord?
A To the best of my knowledge and belief it is;
I have never seen it used or tested on a sound re¬
producing instrument, but it certainly has the ap¬
pearance of such a cylinder.
XQ-13 Arc you able to state positively that this
article which you produce this afternoon is the
very same identical article that you received from
Mr. Joyce?
A To the best of my knowledge I believe it is
the cylinder which I received back from Mr. Eas¬
ton, but whether or not Mr. Easton returned me
the same cylinder or not, I cannot, of course, swear,
as I had made no identifying marks upon it. Of
I do not recollect clearly to whnt the last sen¬
tence refers, or whether lie means the exhibitions
of the Misco business or of the Joyce cylinder. In
fact, I do not recollect what the “Misco” business
By Mr. Massie:
The answer is objected to, particularly the
quotation of the Devine letter, as irrelevant'
and immaterial, and ns incompetent as being
only part of the correspondence.
(The witness continues). This is all that I have
been able to find at the present time.
Q-9 Who is Andrew Devine, from whom you re¬
ceived the letter out of which you have read an
extract? '
A Andrew Devine is an old friend of mine, and
was formerly president of tile National Typograph¬
ic Company, of which company I am now president.
At the time in question I was the company’s attor¬
ney, and the letter for the most part relates to
company business. He was at one time one of the
vice-presidents of the American Graphoplione Com¬
pany, and a director for a long time. Just what
his connection is with that company at the present
time I have no means of knowing.
. I i
) imply that iu any way Mr.
at ine another cylinder in
Signature and certificate waived.
STIPULATION, APRIL 20, 1900.
It is further stipulated and agreed between the
parties as follows: That David W. Dodd, if called
as a witness for complainants, would testify that
lie lias had charge of the Wax Departments of
complainants for more than three years last past,
and is and lias been familiar with the materials
and processes there used, and that the blank cylin¬
ders, employed by complainants for engraving orig¬
inal sound records thereon, are made from a com-
2q position set forth in Formula B of the patent to
Macdonald, No. C0G.725, July 5, 1898, and that it
was this composition that complainants’ witness,
Browne, obtained in making a sound-record* re¬
ferred to by him in answer to redirect questions
129 arid 130.
The parties, by their counsel, further stipulate
and agree that Frank L. Dyer, if culled as a wit¬
ness in behalf of complainants would testify as
30 follows :
I live in Montclair, New Jersey, and am Gen¬
eral Counsel for the complainant companies, New
Jersey Patent Company and National Phonograph
Company, having acted in this capacity since the
early part of the year 1903. I have bad charge of
Mr. Edison’s patent litigation and other patent
matters since 1897. I am thoroughly familiar with
all the suits between the National Phonograph
40 Company and allied companies on the one hand,
519
and the American Graphophone Company and
other companies allied therewith on the other
hand.
In recent years, this litigation has related to
phonograph records and compositions and to pro¬
cesses and apparatuses for use in the manufacture
thereof.
Mr. Mauro 1ms testified that there have been
eight such suits which have been brought by tbe
National Phonograph Company and companies
allied therewith against the present defendants and
their selling agent, the Columbia Phonograph Com¬
pany, General, including tiiese three suits in the
Southern District of West Virginia, and I think
that the brief history given by him of these eight
suits is correct so far as it goes. I cannot see
what any other cases than the ones now on trial
have to do with the issues to be decided by tbe
court, but it may be wortli while to call attention
to the fact that not all such litigation between
these rival interests, has been instituted by tbe
National Phonograph Company, for within the
last four years there have been three such suits
brought by the defendant against the National
Phonograph Company. These suits are as follows:
1. American Graphophone Company vs. Na¬
tional Phonograph Company, on Macdonald com¬
position patent, No. 000,725, District of New Jer¬
sey, bill filed on April 1, 1905. On June 12, 1908,
bill dismissed by consent.
2. American Graphophone Company vs. Nation¬
al Phonograph Company, on Macdonald composi¬
tion patent, No. 020,709, District of New Jersey,
bill filed on April 1, 1905. On June 12, 1908, bill
dismissed by consent.
3. American Graphoplionc Company vs. Na¬
tional Phonograph Company, on Macdonald reis¬
sued patents, Nos. 12,095 nnd 12,090, District of
New Jersey, hill filed on April 23, 1908. A motion
for preliminary injunction and supporting affida¬
vits were filed by complainant with the bill, and
answering affidavits were filed on June 1, 1908.
Complainants have never pressed this motion for
10 preliminary injunction, and have virtually aban¬
doned it.
Both the suits above numbered, 1 and 2, were
dismissed by consent, at the same time that the
single suit of the New Jersey Patent Company vs.
Columbia Phonograph Company, General, also in
the District of New Jersey, which is No. 7 in Mr.
Mauro’s list on page 231 of the printed joint rec¬
ord in the present suits was dismissed by consent
The patent to Mr. Edison No. 713,209 sued on in
suit No. 1103 in the U. S. Circuit Court of the Dis¬
trict of Connecticut, which, with suit No. 1070 in
the same court on Edison Patent No. 007, G62 (Nos.
2 and 1, respectively, in Mr. Mauro’s list), have
been referred to by Defendant’s witnesses, Mauro
and Massie, as “the Connecticut cases,” was for an
30 expanding or pressing process. In the process dis¬
closed in that patent a metal matrix is first formed
upon a master record. The master record having
been removed, a hollow blank cylinder of wax-like
material turned to accurately fit the bore of the
matrix, is introduced therein. This blank is then
expanded by heat or by pressure applied by means
of a tapered core in order that it may receive an
impression from the interior surface of the matrix,
after which it is contracted by chilling to clear the
40 interlocking surfaces and withdrawn longitudinal¬
ly from the matrix. There is no disclosure or sug¬
gestion in that patent of a casting process of any
kind.
Following a description of the method of obtain¬
ing the matrix the process is described in the pat¬
ent in the following terms (Patent No. 713,209,
pnge 2, lines 4-09) :
Having obtained a suitable matrix carrying
a negative representation of the original pho¬
nographic record to be duplicated, I proceed
with the duplication of the records as follows:
The blanks which are to receive the duplicate
records are preferably composed of a material
having a higher coefficient of expansion than
that of the matrix or mold, and said blanks are
made sufficiently thick to maintain their shape
during and after the act of disengagement
from the matrix, as will be explained. The
blank under normal temperatures is of a diam¬
eter very slightly less than the bore of the
matrix or mold, whereby the blank may be
inserted in the same. After the blank has been
thus placed within the matrix or mold both the
matrix and the blank contained therein are, or
the blank alone is, brought to a higher tem¬
perature, whereby the blank will expand and
will be brought into intimate contact with the
record-surface of the matrix or mold, whereby
the negative record thereof will be impressed
with absolute accuracy upon the surface of the
blank. The expansion of the blank into this
intimate engagement witli the interior of the
matrix or mold may bo effected in any suitable
way, such as by maintaining the matrix or
mold, with the blank contained therein, in a
heated atmosphere. By making the blank of
a material having a higher coefficient of expan¬
sion than the matrix or mold the blank will be
properly expanded to receive the impression
of the record, notwithstanding the fact that
)t| both the blank and the matrix or mold may
t be subjected to the same temperature.
10
30
40
In order to facilitate the operation and make
the resulting duplicate record somewhat
sharper, I prefer to introduce a tapering man¬
drel within the blank after the blank has been
placed in the matrix or mold and heat applied
to the blank, ns explained, and to force the
mandrel tightly within the blank after the
latter has been expanded into engagement with
the record, whereby the blunk will be further
expanded mechanically into absolute intimacy
with the record, after which the mandrel will
be immediately withdrawn. Witli blanks made
of sufficiently viscous material the entire ex¬
pansion may be effected mechanically by for¬
cing a tapering mandrel within the same.
After tiie blank has been expnnded, so as to
receive the impression of the matrix or mold,
it is removed by first shrinking it radially in
any suitable way, as in a refrigerating cham¬
ber, and by then withdrawing the resulting
duplicate by a direct longitudinal movement.
Owing to the shallowness of the phonographic-
record groove tliis radial shrinkage of the du¬
plicate record effects a sufficient separation of
the surfaces of the matrix and of the dupli¬
cate record to prevent injury to the surface of
the duplicate record due to any longitudinal
contraction thereof.
The claims which were in issue in the Connecti¬
cut suit No. 1103, were Claims 2 and 3 of Patent
No. '713,200, which claims are as follows:
Claim 2: “The method of producing hollow
cylindrical phonograms, which consists in ob¬
taining a mold having a reverse phonogram-
record on the inner wall of a cylindrical open¬
ing, forming a hollow cylindrical plastic pho¬
nogram within said mold, releasing the phono-
gram from the mold by a radial contraction of
the pronogram sufficient to entirely clear the
surfaces, and removing the phonogram from
the mold by direct longitudinal movement”
Claim 3. “The method of producing hollow
cylindrical phonograms which consists in ob¬
taining a mold having a reverse phonogram-
record on the inner wall of a cylindrical open¬
ing, forming a hollow cylindrical plastic pho¬
nogram within said mold, releasing the pho¬
nogram from the mold by a reduction in tem¬
perature sufficient to entirely clear the sur¬
faces, and removing the phonogram from the
mold by direct longitudinal movement.”
The process of the defendant in the Connecticut 10
suit No. 1103 (likewise defendant here), which
complainants alleged to infringe Patent No. 713,-
209 there in suit, was a casting process, in the prac¬
tice of which molten or wax-like material was in¬
troduced between a mold and core and steam ap¬
plied within a jacket surrounding the mold, and
after a time the steam was turned off and cold
water passed through the jacket to chill the dupli¬
cate record and shrink it so that it could be taken 20
out of the mold. (Transcript Connecticut suit, No.
1103, pages 8 and 9.) Complainants contended
in that suit that this casting process infringed the
claims above quoted from Edison Patent No. 713,-
209, because, as was contended, casting a record is
a species of “forming” a record, and these Wnima
were directed to “forming” the duplicate record in
the mold or matrix. Complainants also contended
in that suit that the casting process then practiced
by the defendant is the mechanical equivalent of 30
the expanding process disclosed in the said Edison
Patent No. 713,209.
Defendant, on the other hand, claimed that Edi¬
son Patent No. 713,209 was limited to the expand¬
ing process and did not include the casting process
which they practiced; and that the casting and ex¬
panding processes were not the equivalents of one
another, and in these views they were sustained by
the decision of the court and the contentions of the 40
complainants on tlicso points were overruled. Claim
3 of the Edison Patent No. 713,209 differs from
Claim 2 of the same patent, ns will be seen by com¬
paring the two claims above quoted, only in that
Claim 3 is limited to shrinking the duplicate record
by a reduction in temperature, while Claim 2 is not
so limited. (See testimony of defendant’s expert,
Cameron, Transcript in Case No. 1103, pages 464
10 and 465.) Claim 2, therefore, includes Claim 3,
which is merely somewhat more specific, and what¬
ever may be said regarding Claim 2 is applicable
likewise to Claim 3. In fact, when the Edison and
Joyce interference was declared by the Patent Of¬
fice on this issue, it was stated that this claim “in¬
cludes the patentable subject-matter "of Claims 2
and 3.” (Transcript of Connecticut case No. 1103,
page 555.)
As has been stated by the defendant’s, witnesses,
Hr. Edison obtained this claim in this patent as the
result of an interference with the application which
became the Joyce Patent here in suit, No. 831,088,
Joyce having, in' that interference, conceded pri¬
ority of invention as defined by this claim to Mr.
Edison. . As this claim, which afterwards became
Claim 2 of the Edison patent, was the only issue
of the interference between the Edison application
and this application of Joyce (there was another
3Q interference issue between the Edison application
and a second application made by Mr. Joyce, as
appears on page 555 of the Transcript of Record,
but Claim 2 was the only claim which involved the
Joyce application which eventuated in the patent
No. 831,668), it follows that whatever was said or
decided in the suit on Edison Patent No. 713,209
upon the issues there presented, applies directly to
the only common subject-matter between the Joyce
patent in suit and the said Edison Patent Before
40 continuing with respect to the Connecticut suit on
525
Patent No. 713,209, 1 may say that I do not go into
the matter of the companion Connecticut suit, No.
1076, on Patent No. 667,662, at any considerable
length, for, while this patent was granted to Mr.
Edison upon a casting ' process, it was granted
upon on application filed after the filing of the
Joyce application, their respective dates of filing
being May, 1900, and October, 1897. There was no
interference between it and the Joyce application,
and it, like Patent No. 713,209, contains no sugges¬
tion of the hot mold process of the Joyce patent.
In the Connecticut suit, No. 1103, defendant’s
expert witness, Cameron, repeatedly stated that
Claims 2 and 3 of Patent No. 713,209 (and conse¬
quently, for the reasons already given, the matter
common to that patent and the Joyce patent) have
no application to a casting process, but relate only
to the expanding or pressing process, which, he
stated, is an entirely different thing. The follow¬
ing are some extracts from Mr. Cameron’s testi¬
mony, taken from the transcript in the Connecticut
suit, No. 1103, upon Patent No. 713,209, and in¬
dicating his views upon these subjects:
“The patent in suit appears to be based
wholly upon the difference between easting a
molten material into the mold, and introducing
therein a solid blank which is expanded into
close contact with the surface of the mold.”
(Page 459.)
“So far as the specification is concerned, the
use of a liquid or molten material appears to
be excluded from contemplation.” (Page 460.)
“I, therefore, understand the second step of
the. claim (Claim 2) to mean bringing a solid
impressible material (i. e., a material capable
of being molded by the means in contempla¬
tion), into contact with the mold surface, os
distinguished from bringing a liquid material
into contact therewith and permitting the
liquid to congeal. It is, to my mind, clear that
.
this is the line which the patent draws be¬
tween wlint is included in and what is excluded
from it.” (Page 403.)
“I am clear that the expression ‘forming’
. . . ‘a plastic .phonogram within snid
mold,’ as this expression is used in Claims 2
and 3 of the patent in suit, cannot be con¬
strued to include the act of pouring molten
10 material into the mold and allowing said ma¬
terial to congeal.”
“In my opinion, the step or operation de¬
scribed by the words ‘forming a hollow cylin¬
drical plastic phonogram’ is broad enough to
include any operation wherein a hollow blnnk
in a solid state is expanded outwardly against
the mold surface and receives, the impress
thereof, but not broad enough to include the
operation of introducing a melted material
into the mold and allowing it to congeal so
20 “s t.° receive the configuration of the relief on
the interior of the mold.” (Pages 4G7 and 4G8)
“I have already pointed out that in com¬
plainant’s method a solid blank is pressed
against the interior surface of the mold, where-
as m the method followed by defendant a
molten material is poured into the mold. These
two steps are radically different, . »
(Page 504.)
/‘Referring to the conceded difference which
i ,aye„P.?inte? out in connection with the.nl-
leged fifth point of similarity, i. e., the differ¬
ence between the pressing and the casting step,
Mr. Dyer states that this is not of any impor-
tance since one is clearly suggestive of the
other. With this opinion I oannoUgree The
difference is, in my opinion, a very material
one. The casting method is simpler, cheaper
and produces a better duplicate.” P (Page 505. )
The foregoing extracts are taken from different
points m Mr. Cameron’s testimony, which is quite
a lengthy deposition, and will serve to indicate the
40 position taken by defendant in the Connecticut suit
527
upon the invention defined by Claim 2 of Edison
Patent No. 713,209, and therefore upon the matter
common to this patent and to the Joyce patent in
suit, — this claim, ns I have already stated, being
the issue of the interference between those parties.
Mr. Mnssie, testifying as a witness for defendant,
has testified that the process now practiced by de¬
fendant is the same as the process practiced by the
defendant at the time of the bringing of the Con¬
necticut suits and described in detail on pages 8
and 9 of the transcript of the Connecticut suit No.
1103 (this Record, page 288), and whether or not
Mr. Mnssie is correct in his statement that these
early and later processes of defendant are the same,
each of them is a casting process making use of a
hot mold and is within the claims of the Joyce pat¬
ent in suit. It is apparent, therefore, that, if de¬
fendant was correct in urging and the court was
correct in deciding in Connecticut case No. 1103,
that defendant’s casting process did not infringe
Claims 2 and 3 of Edison Patent 713,209, Joyce’s
disclaimer of the subject-matter of these claims
can have no effect on the claims no wsued on, which
are for a casting process, and, in addition, cover a
process involving the use of a hot mold, neither of
which are disclosed or even suggested in said pat¬
ent No. 713,209 to Edison.
Counsel for complainants introduces in evidence
the deposition of Shelton T. Cameron, taken in the
suit of National Phonograph Company vs. Ameri¬
can Graphophonc' Company, in the United States
Circuit Court for the District of Connecticut, in
Equity No. 1103, at Washington, D. C.,, beginning
on March 1G, 1904, and the same is marked :
“Complainants’ Exhibit — Cameron Deposi¬
tion in Connecticut suit on Edison Patent,
No. 713,209,”
It is stipulated that for the testimony from the
Connecticut suits referred to in the foregoing stipu¬
lation, complainants may refer to the copies of the
transcript of record marked for identification on
behalf of defendant near the close of the deposition
of defendant’s witness, C. A. L. Mnssie, taken on
January S, 190S (printed record, page 283), as:
“Defendant’s Transcript in Connecticut suit
on Edison Pressing Process,” and —
“Defendant’s Exhibit — Transcript in Con¬
necticut suit on Edison Casting Process,”
with tlie same force and effect as if the said tran¬
scripts had been produced and mnrkcd for identi¬
fication on behalf of complainants.
Counsel for complainants introduces in evidence
the patents listed below, and the samc-nre marked
“Complainants’ Exhibits,” with the following re¬
spective designations:
No. 372,780 of Nov. 8, 1887, to Berliner,
No. 382,417 of May 8, 1888, to Edison,
No. 400,043 of April 2, 18S9, to Edison,
No. 400,338 of Sept. 29, 1891, to Heysinger,
No. 000,725 of July 5, 189S, to Macdonald,
No. 070,442 of Mar. 2G, 1901, to Tainter.
Complainants’ counsel also introduces in evi¬
dence a copy, certified under the seal of the United
States Circuit Court, for the Second Circuit, in the
Southern “District of New York, of nflldnvits of
Edward D. Easton, C. A. h. Massic, Philip Mauro
find Shelton T. Cameron, filed in a cause entitled
The American Graphophonc Company vs. Wal-
cutt & Leeds, Ltd., ct al,” on March 3, 1908, and
529
the snnic is marked “Complainants’ Exhibit— Cer¬
tified Copy of Defendant’s Affidavits in its suit
ngainst Walcutt & Leeds.”
Complainnnts’ counsel also offers in evidence a
photograph of the core and one of the molds and
one of the bases which were offered in evidence on
behalf of complainants in connection with the tes¬
timony of Maurice Joj’cc, taken on February 24,
190S, and forming part of complainants’ rebuttal
proofs in these three suits, after the answer of the
witness to Q-20 (printed record, page 33G), and
the same is marked “Complainants’ Exhibit — Pho¬
tograph of Joyce Original Mold, Core and Base.”
Complainants’ counsel offers in evidence two
photographs of the Commercial Joyce Apparatus
which was introduced in evidence on behalf of
complainants in connection with the testimony of
Martin Shannon, forming part of complainants’
rebuttal proofs in these three suits and taken on
March 4, 1908, after the witness’s answer to X Q-
2-1 (printed record, pages 327-8), and the said pho¬
tographs are marked :
“Complainants’ Exhibit— Photograph of
Commercial Joyce Apparatus Unassembled,”
and —
“Complainants’ Exhibit— Photograph of
Commercial Joyce Apparatus Assembled.”
Complainants’ counsel also offers in evidence, in
these three suits, three photographs of the mold
nnd reaming tool offered in evidence in connection
with the deposition of Peter Weber in the suit on
Patent No. 683,015, and taken on November 1,
1905, and introduced in evidence at the close of the
witness’ answer to Q-9 of his deposition (printed
record, page 20), and the same are marked :
“Complainants’ Exhibit-Photograph of
Weber’s Reproduction of Defendant s Reaming
Tool;”
530
“Complainants’ Exhibit — Photograph of
Weber’s Reproduction of Defendant’s Mold
and Core Unassembled;”
“Complainants’ Exhibit^-Photograph of
Weber’s Reproduction of Defendant’s Mold
and Core Assembled.”
It is stipulated that the said exhibits offered in
connection with the Weber deposition in suit on
10 Patent No. G83,615, at the close of the witness’s
answer to Q-9 of his deposition, and marked “Com¬
plainants’ Exhibit — Weber Reproduction of De¬
fendants’ Mold,” and “Complainants’ Exhibit _
Weber Reproduction of Defendant’s Reaming
Tool,” may be used in each of these three suits
troduced in each of the said suits.
It is stipulated that all testimony produced in
these suits and filed by either parly nnd in which
0 the signature of the witness and the certificate of
the Examiner are waived, may be filed by the
Clerk with the same force nnd effect as if signed
by the witness and accompanied by the proper cer-
tificate of the Examiner.
It is stipulated that counsel for neither party
need serve briefs upon opposing counsel until the
day of the argument upon final hearing.
Defendant’s counsel consents to the foregoing
30 stipulations without waiver of his right to make
all proper objections thereto, and without waiver
of the objection noted on December 8, 1908, before
the deposition of Robert Fletcher Rogers, which
latter objection is repeated to the foregoing stipule-
Defendant’s counsel objects to the stipulated tes-
tunony of David Dodd and of Frank L. Dyer, as
well as to the exhibits offered in evidence, on the
40 teriah^ ^ ^ Sa'“e ar0 ilTelevnut and imma-
531
Mr. Dyer’s stipulated reference to the decision
of the U. S. Circuit Court for the District of Con¬
necticut, in the so-called “Connecticut litigation,”
is further objected to ns incompetent, on the ground
that the opinion of that court (reported in 135
Federal Reporter 809) speaks for itself.
Complainants’ Exhibit— Certified Copy of De¬
fendant’s Affidavits in its suit against Walcutt &
Leeds, is further objected to as incompetent to
prove any issue in the present litigation.
Complainants’ counsel gives notice of the close
of its rebuttal proofs, this 20th day of April, 1909.
Ferreiit H. Dyke,
Of Counsel for Complainants.
, C. A. L. Massie,
Of Counsel for Defendant.
Legal Department Records
Phonograph - Case Files
National Phonograph Company v. American Graphophone Company
and Columbia Phonograph Company, General
(Edison Patent 454,941)
National Phonograph Company v. American Graphophone Company
and Columbia Phonograph Company, General
(proposed suit)
National Phonograph Company v. American Graphophone Company
and Columbia Phonograph Company, General
(Edison Patents 397,280 and 430,278)
This folder contains material pertaining to three suits brought or
considered by the National Phonograph Co. against the American
Graphophone Co. and its sales company, the Columbia Phonograph Co.,
General. The first case was initiated during January 1903 in the U.S. Circuit
Court for the Southern District of New York and involved Edison U.S. Patent
454,941 on a built-up diaphragm. The selected items consist of
correspondence and memoranda pertaining to Edison's deposition in the case.
The second suit was considered by Edison and his attorneys during August
1904 and involved charges of unfair competition. The selected items consist
of correspondence and the proposed bill of complaint. The third case was
initiated during October 1904 in the U.S. Circuit Court for the District of
Connecticut and involved Edison's U.S. Patents 397,280 and 430,278 on a
floating-weight reproducer. The selected items consist of the bill of complaint
and Edison's affidavit.
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[ENCLOSURE]
MEMORANDUM EOR MR. EDISON'S DEPOSITION.
Q-l. What is your name, age, residence and occupation?
A. Thomas A. Edison; age 56; Llewellyn Park, Orange,
New Jersey; Inventor.
Q-2. Are you' the patentee mentioned in letters patent,
No. 454,941, being the letters patent in suit?
A. I am.
Q-3. Please state the circumstances, as nearly as you can
recall them, under which the invention of this patent was
made .
A. When 1 resumed my work on the phonograph in 1887 1
determined to make it a practical, commercial instrument,
which, of course, v/as not true of the original tinfoil phon¬
ograph. In this work, v/hich occupied several years of my
time, 1 made many thousand experiments, on which 1 spent a
great deal of money. The phonograph in its present state
of commercial development is not the result of any one part¬
icular invention, hut is the result of a large number of
small inventions all contributing to the desired end. Among
these was the use of an all-wax blank, and also a blank hav¬
ing a tapered bore so as to be removably secured on the
phonograph mandrel; and also the employment of a compensat¬
ing weight to keep the reproducer stylus in proper engage¬
ment with the record, notwithstanding irregularities in the
latter, and the use of a round edge recording knife with a
ball shaped reproducer; and also the employment of sapphire
as . the material from which to make the stylus - all these
inventions made the phonograph a commercial apparatus, and
they have been largely adopted in the art by manufacturers
of apparatus of the phonograph type* Among the large numb¬
er of inventions’ v/hich 1- made during the development of the
[ENCLOSURE]
phonograph was the invention of the patent in suit, which
relates to the diaphragm. 1 found that when a diaphragm
\r*B used for reproducing it required a considerable amount
of energy to vibrate it, and consequently there was an un-
| desirably great wear of the delicate record surface. This
r was increased if the record was loud and deep, because
J in that case the diaphragm required to be vibrated through
UB-eater 50,11)1:1 tude > and lts resistance increased with the
If amplitude . In order to overcome this defect 1 attempted to
make use of extremely thin diaphragms, which. could be vi¬
brated more readily and , consequently, with less wear upon
the record surface. 1 soon found, however, that very thin
sensitive diaphragms were comparatively flabby and vibrated
I locally, so that much of the energy was expended in vibrat¬
ing the diaphragms locally instead of giving the diaphragm
bedfly movements ^t^d^^which are necessary to secure
good reproduction. 1, therefore, quickly ascertained that
the reproductions obtained with very thin, sensitive dia¬
phragms were too faint for practical purposes. At the same
time, if the diaphragm was made thick enough so as not to
vibrate locally, it resulted in enormous wear on the record
surface. 1 then determined, if possible, to produce a dia¬
phragm which should have the sound reproducing qualities
of a very thick diaphragm and, at the same time, which would]
not impose any greater wear on the record surface than a
very thin diaphragm. After considerable thought and experi-]
ment, l produced the diaphragm of the patent in suit, which
1 found answered my purposes very perfectly. With that dia-|
phragm in its preferred form 1 make use of a very thin sen¬
sitive diaphragm, clamped at the edges in the usual way,
and provided with one or more superposed disks of less dia¬
meter and preferably of greater thickness and made of the
same material, such as glass or mica. Such a diaphragm is
[ENCLOSURE]
really a laminated diaphragm, formed of a aeries of disks
of gradually reduced diameter, and preferably of increasing
thickness. 1 found that when a diaphragm is made in this
way the very thin disk yields readily so as not to produce
undue wear on the record surface, while the superposed disks
produce stiffness and prevent local vibrations , so that the
effect secured is as good as v/hen a very thick diaphragm
is used without the disadvantage of such a construction.
The diaphragm in question, as covered by the patent in
suit, was gotten up particularly for reproducing purposes,
as it finds its principal utility in that field and is now
used not only by the manufacturers of the phonograph, but
also by the makers of the graphophone, the present; defend¬
ants herein. The diaphragm is, however, capable of effect¬
ive use in recorders, as it enables the diaphragm to be
made very sensitive while, at the same time, the maximum
amplitude is imparted to the recording stylus, which would
not be true if the diaphragm were equally thin and sensi¬
tive at all' portions. In the latter case a very thin, sen¬
sitive recording diaphragm would vibrate locally so as to
detract from the amplitude of the recording stylus.
(3)
Newark, N.J., JTov. 24-1903.
Hat, Phono. Co.,
vs .
Am. Grapho. Co. _
Prank L. Dyer, Esq.,
Edison laboratory,
Orange, H. J.
Dear Sir:-
I have bean thinking a grept deal about the depositions in
the built-up diaphragm case. 1 see no objections to Hr. Edison
testifying on the lineB indicated in his memorandum, but I think it
very important that in your deposition you should elaborate the
difficulties to be overcome and the way they were overcome as indi-
•cated in thyjgposition drawn by meVj The main .trouble you will
have in the^affe will be to show that in view of the prior Art,
there was any invention in getting up the diaphragm, and Mr. EdisonA
theory as to the difficulty to be overcome and the way it was over¬
come may not seem to show inventive ability, but if the matter is
elaborated as 1 suggested, it would show the court that perfecting
the diaphragm in this way was the result of long scientific study
and experiment, and I am stupe would impress the court very favor¬
ably. There is nothing to be los,t by putting it in and in my opin¬
ion a great deal to be gained.
In regard to the \iiaims.
In my judgment the liride Iccta^bi for us to pursue is at the
hearing to stand only on claim Ho. 3. \ that 1 do not mean to
abandon the other claims-, but dimply to i^fiore them, so that in
Prank L. Dyer, Esq., Page 2.
this case we stand on the infringement of claim 3. Nothing can
he lost hy this mode of xirocedure. If we can get an Injunction on
any claim we certainly can get it on the third claim.
In the same way the question of the recorder will not come
up in any way, as no infringement of that i3 shown.
I am strongly apposed to bringing In the other two claims
in this suit where they are not necessary and thus running the risk
of their possibly being knocked Out' on account of a full discussion
of their merits not being presented to the court as not involved In
the infringement shown. I understand that Hr. Edison values these
claims' highly, as a ^SBult of experiments he is now making. leav¬
ing them out of the discussion, the effect would be the same as if
they were in a separate patent and they can be used any time in the
future to sustain any valuable device which Mr. Edison hereafter nay
put on the market. \ Your principal trouble will be to distinguish
functionally between a phonograph diaphragm and a telephone dia¬
phragm, bxit cutting put the recorder from the patent would not help
us in the least in regard to this. The principal difference which
I can see between them Is that the ordinary telephone diaphragm Is
under constant strain throughout ltTs whole surface by the action of
the magnets, while the phonqgraph reproducer is either under no
Btraln at all oh onljr at a joint, where the reproducing BtyluB is at¬
tached to it. This would make a vast difference in the way the
two diaphragm^ would act acowptically. I would be glad to Bee your
draft of your deposition as. soon as you get it out.
HWH/lSD. YourB truly.
Dec. 1,1903,
Memorandum re Built-up Diaphragm suit.
In order to determine the superiority of built-up
diaphragms as compared with plain diaphragms, I requested the
foreman of the diaphragm department to furnish me with four
standard Model C speakers with different diaphragms, hut as near¬
ly alike as possible in all other 'respects. The first of these
Mo. 225, 395, had a regular stock built-up diaphragm; the second
No. 227, 615, had a plain diaphragm .0015 in thickness; the third
No. 227, 617, had a plain diaphragm .0025 in thickneBs;- and the
fourth No. 227, 616, had a plain diaphragm .0035 in thickness.
On December 1st, 1903, 1 handed the four speakers in question to
Albert Wurth and requested him to inform me which .‘of the four
diaphragms was the best. After testing them he decided without '
any hesitancy on. the regular built-up diaphragm. 1 then handed
' the four speakers to Mr. Wangeman and -requested him to make a .com- /
parison thereof', which he did, the regular built-up diaphragm
being very superior and the plain diaphragmB being selected in
the order of •their thickness, the thickest being the best. I then
handed -the speakers- to Walter .Miller and requested him to make a
similar investigation whioh he did with two of his assistants,'
Messrs Werner and Harvey. These three gentlemen kept ^separate
and independent memorandum of theii; impressions, According to
Mr.. Miller the built-up diaphragm was rated at 60, the .0035 at
40, the .0025 at 30 and the .0015 at 20, According to Werner the
built-up diaphragm was rated, at 100, the .0035 at 75, the .0025
at 50 and the .0015 at 25. ■ According ^to Haryey the built-up '
■diaphragm was marked "Good", the .0035 was marked "Second Best", ' :
and the two others ware marked "H.G.". ' :
i Memorandum. attached hereto, ^
[ATTACHMENT]
[ATTACHMENT]
'Gold Moulded Records'
Jan. 25, 1904,
William'S. Gilmore, Esq., President,
National Phonograph. Company,
Orange, N. J.
Dear Sir:
In accordance with your request, I have made a rather hur¬
ried examination, through the authorities , on the subject of unfair
competition, to determine whether we could probably succeed in an
action against the Graphophone Company fir the use of the expression
"gold moulded" in describing their records.
It was Ijeld in the case of Sterling Remedy Co. vs. Eureka
Chemical & Manufacturing Co., 80 Ped. Rep. 105, that "the test of
infringement is whether the alleged infringemenfcrticle is so dreBBed
the of
that it is likely to deceive persons of ordinary intelligence in exercise
the slight care ordinarily bestowed in purchasing an article,. to;
mistake one man's goods for the goods of another", and in a; later
case (Keuffel- & Esser Company vs. H. S. Crobler Co., 118 Ped. Rep,:
187) the courts said: "Where a complainant lias been in business
for many years, and has built up a high reputation and. large sale
for his goods, rendering its good will valuable, the law requires
another, entering the market as a competitor, to use suoh method. of
wrapping, labeling and cataloging of his packages as not to lead an
William E. Gilmore -2-
intending purchaser of ordinary intelligence, using ordinary care,
into the mistaken belief that he is purohasing the goods of com¬
plainant. "
In the present case, the fact that the expression "gold
moulded" is descriptive of our own goods as well as those made by
the Graphophone Company is not important, because it has been held
that "where the question is simply one of unfair competition, it is
not essential that there should be any exclusive or proprietary
right in the words or labels used". (Pillsbury-V/ashburn P^our-Hills
Co. vs. Eagle, 86 Eed. Rep. 608).
In the present case, it seems to me that, the history of the
moulded record business shows an intent on the part of the Grapho¬
phone Company to imitate our business methods in many ways, and to
put out its goods in such a way as to be likely to deceive the pub¬
lic. In the first place, hearing that we contemplated making mould-
records, they also undertook to produce suoh articles, so that they
were able to get on the market very shortly after the Edison
moulded records appeared. In doing this, we Bay that they infringed
our patents, and that is a question whioh must be decided in the in¬
fringement suits now pending.
In the next plaoe, when the Edison records were put out,
a special composition was used, so that a very hard record would
be obtained, and we find the Graphophone records u substantial im¬
itation tjf our own in this respect.
In' the next plaoe, in order that the Edison records might
have a distinctive and novel appearance, the composition was colored
black by the introduction of lamp black, and in this respeot we
William E, Gilmore -3*
find, that the Graphophone reoords also are exact copies.
In the next plaoe , after we got our reoords on the market ,
and began to call them “gold moulded records", we found that the
Graphophone Company make use of this very expression in designating
their own produot,
Finally, it is to be observed that in the spelling of the
word "moulded" we depart from the ordinary American acceptation
thereof { "molded") , and use the English spelling, and we find that
even in this .idiosyncrasy the Graphophone Company have followed in
our footsteps.
Mow what was the purpose of the Graphophone Company in thus
copying us, unless it was to receive some benefit by doing so? Ad¬
mitting, for the sake of argument, that they considered themselves
justified in making moulded reoords at all, why was it necessary
for them to ohange their composition, and if they changed their com¬
position, why wan it necessary that they should make a black com¬
position, and why did they use the expression "gold moulded", and
finally, why did they spell the word "moulded" in the Bame way that
we spelled it? .It seems to me that the only answer which oah 'be
given to these questions is, that the Graphophone Company expected
in some way to be benefited by these counterfeiting operations,
and I believe that this can be fairly considered unfair competition.
A few oases of unfair competition in the paet may interest
you:
- . In The Sawyer Crystal Blue Co. vs. Hubbard, 32 Fed. Hep.
388, the complainant’s liquid blue had been put up in bottles with
bright metallio caps having six perforations. Defendant put up
William E, Gilmore -4-
blueing in similar bottles, and this use was enjoined.
In Cook & Bernheimer Co. vs. Ross, 73 Bed. Rep. 203, the
complainant had built up a large trade in Kt. Vernon whiskey put
up in square bottles. The defendant had previoulsy been bottling
this whiskey in ordinary bottles, but finally adopted the square
bottles. In this case the court. (Judge. Lao ombe) said:
"Despite defendants', denials - and they only deny intent
to deceive the public, not intent to use a form of package just
like complainants - the court cannot escape the oonviotion that
they found the square-shaped bottle 'convenient and useful* be¬
cause it was oalculated to increase the sale of their goods’, and
that such increase, if increase there be, is due to the circumstance
thai the purchasers from defendants have a reasonable expectation
that the ultimate consumer, dooeived by the shape, will mistake the
is
bottle for ono of complainant's* This unfair competition within the
authorities, and should be restrained."
In Shaw Stocking Co* vs* Mack ot als., 12 Pod. Rep. 707,
complainant's goods were put up in boxeB marked with the trademark
"Shawknit", and certain arbitrary numborB for the different styles.
The defendants' goods were marked "Seamless", arranged in the same
kind of printing, and using the same arbitrary numbers* This was
regarded aB unfair competition, and was stopped.
In Morgan's Sons Co* vs* Wendover et al., 43 Bed* Rep* 420,
decided in this Circuit, the evldenoe showed that when customers
went into defendant's store and asked for oapo.lio, they were given
a different Boap oalled "pride of the kitchen" The court saidj
"The base falls clearly within the principle that equity Bhould
William E. Gilmore -5*
prevent a party from fraudulently availing himself of the trademark
of another, which has already obtained ourrency and value in the
market, by whatever means he may devise for that purpose. She de¬
fendants had no right to represent, by wdrd of mouth or by act,
directly or indirectly, that "Pride of the Kitchen" waB sapolio,
and yet this is what the acts of that agent amount to. Such acts
should be restrained." '
In Humphrey's Specif io Homeopathic Medicine Company vs.
Wens, 14 Fed. Rep, 250, the complainant for many years had been
putting up homeopathic specifics which were identified by aertain
arbitrary numbers. The defendant used the Bame numbers, but swore
"that adopting the same numbers which Humphrey has UBed was purely
accidental". An injunction was granted, nevertheless, and the court
said: "If this was acoident and not intention, it is one of the
most remarkable coincidences that ever occurred, and 1b a serious
tax upon human credulity."
In the National Buscuit Company- vs. Baker et al., 75 Fed.
Rep. 135, complainant's goods v/ere put up In special packages and
identified by the trademark "Uneeda". The defendant imitated these
packages, but used the word “Iwanta" . Judge Laoombe, in dooiding
this case, said, "Here, too, we have the manufacture* of the artiqles
complained of, who explains, as usual, that in adopting a trader.aaiie’
by which to identify his own prpduct, he hap been most 'careful
not t° trespass on any rights' of complainant, and that 'after con¬
siderable thought', he seleoted a name which would make the differ¬
ence between his goods and complainant's' distinot and plain, so
that there could be no possibility of mistake'. It is a curious
William E. Gilmore -6-
faot that so many manufacturers of proprietary articles, when con¬
fronted with some well-advertised trade name or mark of a rightful
manufacture’, seem to find their inventive faculties singularly un¬
responsive in their efforts to differentiate. Thus, in one case,
'Cottolene' before him, defendant's best effort at differentia¬
tion resulted in. •Cottoleo', and 'Mongolia' seemed to another
kkK defendant entirely unlike 'Magnolia' . The manufacturer of the
articles which defendants in the case at bar are selling,* seemed
to have had no bettor luck, for, with the word "Uneeda" before him,
his device to avoid confusion, was the adoption of the word "Iwanta*
Erbm these cases, you will see that the courts have gone a
long way to prevent the use of words, labels, colors, forms of pack¬
ages, etc., evidently adopted in imitation of other goods, and I
believe as strong an instance of unfair competition oould be made
out in the present case aB in any of the cases. above referred to.
Of course this assumes that the expression "gold moulded" was first
used with Edison records,' and that the public to some extent associ¬
ates the expression with ouch records.
It would bo very helpful to us if we oould secure the evi¬
dence of some one who in asking for "go Id moulded records" expeoted
to get Edison goods, but received Columbian goods instead. Do you
know of any subh instance' having arisen in the paBt, or .can such
evidence be now secured?
Yours very truly,
ELD-EP.
f
Prank L. Dyer, Esq.,
Laboratory.
Dear Sir:
Referring to your letter of Jan. 25th, and the conversations
that we have had relative to bringing action against the Graphophone Co.,
for using the words "Gold Moulded" in describing their records, after
discussing this matter quite fully ’with Mr. Edison it has been decided
that you shall proceed against them. I think it would be wise for you
and I to get together so as to deoide to whom we will give the case*
We have got to get an active man and one right up to date.
I think it would be wise, also, to bring up the last paragraph of
your letter so that wb can discuss that. 1 am holding the letter ojn my
desk.
Unfair Competition.
May 11, 1904.
American Graphophone Company,
Bridgeport, Conn.
Gentlemen:-
Tffhen the National Phonograph Company put itB new *
molded records on the market in February 1902, they were character¬
ized in the respects, first, that the records were very haSd, pol¬
ished and intensely black and, second, they were provided on their
interior with parallel ribs. The molded records first manufactured
by the American Graphophone Company and sold by the Columbia Phono¬
graph Company, and vtoich were first put on the market about March
1, 1902, were entirely different in character from Edison molded
records, although made by what I regard as a process infringing the
Edison patents. These fitfst Columbia records were comparatively
soft and were so advertised by you, of ,a brown color, and were
provided with a single spiral rib. The Edison molded reoordB
and the first Columbia molded records were therefore dissimilar in
appearance, and the' public would not be likely to' mistake one for
the other .
A few months ago, the American Graphophone. co. be¬
gan the manufacture of, and the Columbia Phonograph Co. sold, mold¬
ed records which can with difficulty in my opinion, except as to
quality, be distinguished from the Edison molded records, because
r
American Graphophone Co. 2.
they are hard, black, polished and are provided with parallel rihs.
To the eye it is very difficult to distinguish the two records
apart, and the coyping by you of our goods I regard as unfair com¬
petition by which you expected to receive some benefit commercially.
ShbBegueiit to the introduction of the present Columbia record, the
National Phonograph Company,- in order that | distinctive name might
be applied to its records, adopted the expression - “Gold NouldediRec ords
which it has extensively used in its advertising matter and which
|he public associates with Edison records.
Since this expression was adopted by the National Phono¬
graph Company, the American Graphophone. Co. and the Columbia Phono¬
graph Company began to apply the same expression to their records,'
and this I think indicates another instance of unfair competition.
1, therefore, write for the purpose requesting that you
desist from the manufacture |f records so -closely approaching Edi¬
son "Gold Moulded Records" in appearance, as to be lively to mis¬
lead the public , and further that you desist fr om using the express- •
ion "Gold Moulded" in connection with your reco'rds. I am writing
a similar letter to-day to the Columbia Phonograph Co. Kindly . , ' V
let me hear from you in reference 'to this matter.
, Yours very truly.
. A
-mi/m.
July 26th, 1904.
Ufa. E. Gilmore, Esq.,
Dear Sir:-
National Phonograph Company,
Orange, H.J.
I send you herewith, a copy of the proposed form
of Bill to he filed in the suit against the American Graphophone
Company and the Columbia Phonograph Company, for unfair competi¬
tion in the sale of records.
Very truly yours,
DH/AEK.
Enc .
[ATTACHMENT]
UNITED STATES CIRCUIT COURT
DISTRICT OP NEW JERSEY.
NATIONAL PHONOBRAPH COMPANY,
Complainant,, .
VB. J
IN EQUITY.
AMERICAN SRAPHOPHONE COMPANY, and :
COLUMBIA PHONOBRAPH COMPANY, :
Defendants .
TO THE HONORABLE THE JUDBES OE THE CIRCUIT
COURT OE THE UNITED STATES EOR THE DISTRICT OE HEW JERSEY.
National Phonograph Company, a corporation duly
organized and exioting under and by virtue of the laws of
the State of New Jersey, and having its principal office
at West Orange, County of Essex in said State, brings thiB,
its Bill of Complaint;, against the American Sraphophone
Company and Columbia Phonograph Company, corporations or¬
ganized and existing under and by virtue of the lawB of the
State of West Virginia, and having a Joint plaoe of businesn
at Paterson, Passaio County, State of New Jersey, and in
said District.
And thereupon your orator, oomplainB and says:
1. Your orator avers that ever Binoe its incorpora¬
tion in 1898, it has been engaged in the manufacture at its
factory at West Orange, New J’erBey, of phonograph records,
and in the sale of such phonographs records, and in the sal<
-1-
[ATTACHMENT)
of phonographs manufactured for your orator by the Edison
Phonograph Works, said phonographs and phonograph records
being manufactured and sold under patents granted to Thomas
A. Edisonj and your orator alleges on information arri be¬
lief, that the defendant, American Graphophone Company, for
many years past haB manufactured at Bridgeport, Connecticut
a special type of phonograph, known as the graphophone, and
reoordB therefor, under license of certain of said patents
of Thomas A. Edison, which graphophonee and records have
been sold by defendant, Columbia Phonograph Company; and
your orator alleges that phonograph records and graphophone
records are of substantially the same size so that either
may be used interchangeably upon phonographs or graphophone n
2. Your orator alleges that sinoe February 1, 1902,
your orator has manufactured and sold to the extent of
many millions annually, a new and distinct type of phono¬
graph molded records, having certain special and unique
characteristics, by reason of whioh said molded reoordB
have been associated in the public mind with your orator's
name and reputation; said phonograph molded records were
and are a brllliaht polished appearanoe, of an intensely
black oolor, very hard and durable and provided on their
interior with a series of oonoenttio ribs for engaging
the mandrel of the phonograph.
3. Your orator alleges that for the manufacture
of said phonograph molded records, it employs intricate
and complicated processes, necessitating labor of the
highest skill and involving tedious and expensive operations ,
and your orator employs musical, artistic and dramatic per#
formers of the highest skill and ability, so that the said
molded records sold by your orator are of a very superior
[ATTACHMENT]
quality, and have always been recognized as suoh by the
public.
4. Your orator, on information and belief, alleges
that the defendant, Columbia Phonograph Company, has been
always an active competitor in the buoineso of selling
talking maohine records for use on phonographs and grapho-
phoneB, and that prior to about the first day of July
1903, the defendants made and sold molded records having
certain pecularities by which they were fully distinguishes
in appearance from the molded records made and sold by
your orator.;, Inasmuch as the said molded records made and
sold by defendants were of a dull brown color, were quite
soft, and were so advertised by defendants, and were pro¬
vided on their interior with a singLe spiral rib. The
said molded records made and sold by defendants prior to
about the first day of July, 1903, were fully and complete¬
ly distinguished from the molded reoordB made and sold by
your orator, and exoept as such molded reoordB were made
by defendants by a process which Infringed your orator’s
patents, your orator had no ground, nor did it pretend to
have any ground for legitimate complaint against Baid de¬
fendants for making said molded reoordB, since as between
your orator's molded records and said molded records made
and sold by defendants prior to about the first day of July
1903, there could be no quastion of unfair competition, nor
would the publio be likely to be deceived in mistaking one
product for the o Iher.
6. Your orator on information and belief, alleges
that the molded reoords made and sold by defendants prior
to about the first day of July, 1903, were greatly inferior
-3-
[ATTACHMENT]
to your orator’ a molded records, "both In quality and in
appear ano e, and particularly in tho respects by reason of
wMoh the two typag of molded records waro distinguished
from each other; and although the defendant, Columbia
Phonograph Company, attempted to sell ito said molded
records for the same price as your orator’s molded records,
namely, fifty cents each, the public preferred your orator’s
molded records and refused to purohaBa defendant's said
molded records, except in small quantities and in looali-
ties where your orator’s molded records could not be ob¬
tained, Thereupon, finding it impossible to nuoncssfully
compete with your orator;;, and Booking to derive some
benefit from your orator’s business reputation and good
will, and to thereby doprive your orator of its free and
unrestricted right to market goods of a special peculiarity,
with which the public associated your orator's name and
reputation, and to thereby work your orator great and ir¬
reparable injury, and to deprive your orator of great gains
and profits, they, the said defendants jointly conspired
to put upon the market molded records whloh no closely
approached the molded reoordo mode ani sold by your orator,
in appearance , a.3 to make it difficult for the average
purchaser to distinguish tho one from the other. In pur¬
suance of this scheme, the defendant, American Oraphophone
Company, sometime subsequent to March 1, 1902, began the
manufacture of an entirely different variety of molded
records than that which it had formerly made, and on or
about July, 1, 1903, these new molded reoords were first
sold to the public by the defendant, Columbia Phonograph
Coripany . The new molded records thus made and sold by de¬
fendants, embodied and still embody all the general char¬
acteristics of appearance that distinguished and distinguish
[ATTACHMENT]
your orator' a molded reoords, having the shiny surfaoe
and deep black color, being very hard, and being provided
on their interior with oonoentrio ribs. And your oi&tor
alleges that the aotion of defendants in making and sell¬
ing molded reoords in close imitation of those made and
sold by your orator, has resulted in many instances in the
direct loss of sales, by reason of the fact that a large
number of persons have purchased defendants 'molded reoords
under the belief that they were your orator's molded
reoords, wherefore, your orator has suffered great and
irreparable loss and injury.
6. Your orator, on information and belief, al¬
leges that by reason of the superiority of the now type of
molded reoords whioh your orator introduced to the publio,
a good market exists for such reoords at a lint prioe of
fifty cents each, and if the unfair and unlawful acts
herein complained of had not been committed by defendants,
your orators would be able to sell at thi e figure the
maximum number of molded recordsnwhich your orator has
facilities for manufacturing. Your orator alleges that
on or about Sept ember 1, 1903, the defendants reduced the
list price on their molded records to one-half that re¬
ceived by your orator, wherefore, your orator has been
compelled to reduce the list prioe on its own molded
ue cords, and is therefore put to the necessity of receiv¬
ing a smaller profit on its goods than would be the case
if the unfair and fraudulent acts herein ooraplained of
had not been committed.
7. Your crator alleges that on or about the 30th
of October, 1903, your orator, in order to identify its
[ATTACHMENT]
molded reoorda, adopted as a trade name for the Bane, the
express ion "Gold Moulded" and then and thereafter exten¬
sively advertised its molded records to the trade and pub¬
lic generally under the said trade name, and your orator
has ever since continued to use and is still using said
trade name, and has c ontinued .ta and 1b still advertising
its molded recordB under the said trade name and is the
exclusive owner thereof. And your orator alleges that the
expression "Gold Moulded" at the time your orator adopted
the same as a trade name to indicate the molded reoords
manufactured and sold exclusively by your orator, had
never been used in this country as a trade name for
sound reoords, and your orator alleges that by reason of
the adoption of the said expression "Gold Moulded" ae a
trade name by your orator and by the advertisements of
your orator and by the sale of moSded records under the
said trade name by your orator throughout the United States,
the said expression became and is no w associated in the
mind of the public in this country with the molded sound
reoords manufactured and sold exclusively by your orator,
as hereinbefore set forth.
8. Your orator, on information and belief, allege j
that notv/ithstanding your orator* s exclusive rights in and
to the said trade name, and contriving still further to
injure your orator and in violation of principles of fair
coinpetition in business, and subsequent to the 31st day
of Ootober, 1903, and prior to the filing of this Bill,
the defendants fraudulently and with intent to deceive
the public, adopted the same name "Gold Moulded" and ap¬
plied and is now applying the same to the molded records
[ATTACHMENT]
manufactured and odd toy them and have used and are still
using the oaid name in advertisements of Baid reoords,
wherefor your orator, also on information and belief , al-
legos that a large number of purchasers int aiding to buy
the molded records sold exclusively toy your orator, have
been and are toeing, toy reanon of the practices and mis¬
representations of defendants, deceived into buying the
molded records sold toy the defendant, Columbia Phonograph
Company, whereby your orator has been directly injured toy
loss of sales so incurred.
9. Your orator alleges that toy reason of the un¬
fair and fraudulent acts and practices of defendants as
hereinbefore set forth, your orator has suffered great ard
irreparable loss and injury, and toy which your orator has
been and is still toeing deprived of great gains and profitt ,
which i t mi $it and ofc herv/ise would have obtained , tout whici
have toean received and enjoyed toy the said defendants
through their said unlawful actB and doingB. And your
orator alleges that the said defendants threaten and have
threatened to continue the said unfair, unlawful and fraudu¬
lent acts and practices, although requested toy your orator,
to defiiut from the same.
10. Your orator alleges that the amount of contro¬
versy herein exoeeds the sum or value of two thousand
dollars exclusive of interest and costs.
And your orator therefore prayB &b follows:
1. That the defendants, Amarioan Graphophone Company,
and Columbia Phonograph Company may toe required toy a de¬
cree of this Honorably Court to account for and pay over
-7-
[ATTACHMENT]
to your orator such gains and profitB as have aoorued or
arisen or hean earned or received by said defendants, by
reason of said unlawful doingB, and of such gains and profits
as would have accrued to your orator, but for the unlawful
doings of said defendants, and all damages your orator has
sustained thereby.
2. That the defendants and their associates, offi¬
cers, attorneys, servants, clerks , agents and vrorkmen, may
be perpetually enjoined and restrained by writ of injxmctlo:i
issuing out of and under the seal of this Honorable Court,
from direotly or indirectly making or causing to be made,
or selling or causing to be sold, any cylindrical, hard,
molded, sound records, colored black in imitation of the
cylindrical, hard, molded sound records sold and on sale
by your orator; or any cylindrical, molded, sound raoords
provided with a Baries of internal parallel ribs along its
bore, in imitation of the cylindrical, molded sound records
sold and on sala by your orator; or from applying the ex¬
pression "Gold Moulded" to any sound reoord, which may be
sold hereafter, or offered or advertised for sale by them.
3. That your Honors grant unto your orator a pre¬
liminary injunction lashing out of and under the seal of
this Honorable Court, enjoining and restraining the said
defendants and their associates, afficers, attorneys
servants, olerks, agents and workmen to the same purpose,
tenor and effect as hereinbefore prayed for vdth regard to
the said perpetual injunction.
4. That said defendants may be decreed to pay the
coats of this suit.
5. That your orator may have such otter and fur¬
ther relief as the equity of the case may require.
[ATTACHMENT!
6. That the said defendants may, if they oan, show
why your orators should not have the relief prayed for ,
and may full true and perfeot anewer make, hut not under
oath (answer under oath being expressly waived) p.ooording
to the hast and utmost of their remembrance and belief to
the several matters hereinbefore averred and set forth
and pa-rticularly as if the same were repeated paragraph by
paragraph and the said defendants specifically interrogated,
Eiay it please your Honors to grant unto your orators a writ
of subpoena ad respondendum, issuing out of and under the
seal of this Honorable Court, directed to the said defendant!
American Grap-hophone Company and Columbia Phonograph Com¬
pany, commanding them to appear and make answer to this
Bill of Complaint, and to perform and abide by such orders
and decrees herein, aa to this Co.urt may seem just.
And your orator will ever pray, etc.
Solicitor for Complainant,
Of Counsel.
[ATTACHMENT]
TOUTED STATES 037 AMERICA
DISTRICT OF HEW JERSEY.
On the day of August, 1904, before me
personally apje ured, J.F. Randolph., the Secretary of the
Rational Phonograph Company, the coug>lainant named, who,
being duly affirmed, deposes and says that he is the Sec¬
retary of the national Phonograph Company, and f smiliar
with its business, and that he has read the foregoing
Dill of Complaint, and Knows the contents thereof, and
that the same is true of his own Knowledge except as to
the matters herein stated on infornation and belief, and
as to those matters be believes it to be true; that the
reason why this verification is not made by the complain¬
ant personally is beoause it is a corporation.
Sworn to and subscribed
before me this day
of August, 1904,
£c.ocl/ &6x QS
r./c/er 9
United States Circuit Court,
DISTRICT OP CONNECTICUT.
NATIONAL PHONOGRAPH COMPANY,
Complainant,
AMERICAN GRAPHOPIIONE COMPANY and COLUMBIA
PHONOGRAPH COMPANY GENERAL,
• , J Defendants.
" IN EQUITY.-No. 1166.
Bill of Complaint and Complainant’s Affidavits
on Motion for Preliminary Injunction.
RICHARD N. DYER,
FRANK L. DYER,
Of Counsel.
vus below tliu other nnd ho arranged Unit tho
plnciug of tlio specking trnmpot automatically
iiiovocl tlio recording point into operative position.”
The construction shown in Fig. V of Taintor patent
No. 37(3579, is one in which tho reproducer stylus is
oonneatod to tho diaphragm by a thread or fine wire,
constituting practically a long link, but in that con¬
struction tho stylus was not capablo of movemont in¬
dependent of tho diaphragm. The reference by Mr.
Mnuro to “ machines having both points on one dia¬
phragm " is explained by tho fnut that at that time
phonographs at tho option of tho purchaser were
equipped either with suparato recording nnd reproduc¬
ing devices, or with a singlo device having tho record¬
ing and reproducing stylus conuectod to the sarno dia¬
phragm.
My attention has been called to a grnphophone,
“Typo A-Z numbered 287,511," referred to in tho affi¬
davit of Joseph F. McCoy in this case, ns “ Complain¬
ant’s Exhibit No. 1 ”, I nover saw a grnpho¬
phone of this typo boforo. It is of a dif¬
ferent typo from tho graphophonos made at
the date of tho agreement above recited. It is of the
phonograph typo and embodies tho characteristic feat-
Legal Department Records
Phonograph - Case Files
National Phonograph Company v. Lambert Company
This folder contains material pertaining to the suit brought by the
National Phonograph Co. against the Lambert Co. in the U.S. Circuit Court for
the Northern District of Illinois. The case was initiated in December 1 902 and
involved Edison's U.S. Patent 713,209 on molding records. The selected
items consist of correspondence regarding the progress of litigation; a report
by Walter H. Miller on a visit to the Lambert factory in Chicago; and portions
of the National Phonograph Co.’s brief on appeal to the U.S. Circuit Court of
Appeals. A portion of the court record for this case, the Edison v. Lambert
interference proceeding, appears in Thomas A. Edison Papers: A Selective
Microfilm Edition, Part III, 117:270-301.
December 30,1903.
William IS. Gilmore, Esq.,
Pres., National Phon. Co.,
Orange , N..T.
Dear Sir:-
Your favor of tb 29th instant has been received enclosing
letter from Mr. 'White and copy of circular issued by the Lambert
Company. ThlB circular is tb same as those which the Lambert
Company have been circulating /in this country since the original
suit on the tapered bore patent was decided against ub. As you
will remember;, the Circuit Coijirt of appeals at Chicago, held that
these early patents of Mr.. Edison were perfectly valid, , but ;that
they, were noli Infringed by the product of the, TAirabe’ri;;; Com¬
pany. The db.oision was therefore distinctly favorable to us so
far as our own patents were concerned. You also know that we have
a suit, pending /against the Lambert Company for infringement of our
process for making duplicate records. Sinoe the Lambert ..Company ,
contested an interference with us; on this patent, there can be , in
my opinion, iio. question of inf ringement. The Lambert: pS'oplei’have
taken advantage of every possible technicality to delay a hearing
on this suit dnd have even gone bo, far as to attempt to mislead the
Court yi have every reason.to believe, that these dilatory taotios
are about ended and that the. hearing on the case can be had early in
the spring./ In, view of the admitted novelty of Mr.. Edison's pro-
cess and of the fact that the Lambert Company actually contested
an interference with us involving the stone, 1 do not see how v;e can
fail to prevail in t.he suit.. My instructions to counsel in charge
of the case are that it shall he pressed as vigorously as. possible
in order that an early hearing may he secured.
January 14,1904.
Walter H. Miller, Esq.,
.Orange, N. J.
Dear Sir:- :
. 1 am writing you this letter for the purpose of confirm¬
ing the instructions which 1 gave you 'verbally. The purpose of
your visit to Chicago is to attend the mating of certain experi-
mentB by an expert produced by the Lambert Company for the purpose
of demonstrating the differences between the Edison Expansion
Process and the Lambert Process. . When you reach Chicago you should
arrange, if possible, to have Mr. Henry C. Hecht, Jr. of the Chica¬
go office accompany you as a. Witness. If Mr. Hecht is no longer
employed by the Chicago office, you should get Borne other mechanic
or sufficiently intelligent person to go with you. The local
Attorney in charge of the. case is Mr. P. C. Dyrenforth of the.
firm of Dyrenforth, Dyrenforth & Lee, Monadnock Bldg., Chicago, to
whom 1 give you a letter of introduction herewith. .
" ' The Edison, patent on which -the suit is brought covers
the. expanding process on which Mr. Wurth worked so long. With
that process, the mold was made as now, a blank was then inserted
in the mold, the two were heated so as to' engage the blank with
the. mold, a taper plunger was then driven in to expand the blank
and take an impression, the plunger was then withdrawn, and the
resulting duplicate was allowed to cool so as to contract diamet¬
rically, so as to be withdrawn longitudinally. The Edison patent
W.H.M. 2, 12/U/04.
however, says that the entire expansion cannot he effected, either
by heating or mechanical pressure, but the two forces are preferably
used together. The Edison patent refers to various materials
for use including celluloid. The essential feature of the Edison
patent is the diametric shrinkage of the record after the impression
has been taken so as to clear *ha engaging surfaces and permit the
record to be withdrawn. Before Edison's invention, duplicate rec¬
ords, had been suggested, but they were made either in split molds,
which were open after the impression had been taken, or else in
threaded molds from which the duplicates were unscrewed, or else
the duplicates were so thin that they could be oollapsed after
the. impression had been received. Our theory of the Edison
patent is that it covers any .process in which a continuous mold
is used and from which the duplicates are removed, by first shrink¬
ing them diametrically. This is the point that you should always
keep upper-most in your mind.
With the Lambert process the molds are made substantially
as we make them, except that instead of a vacuous deposit of gold,
the r, record i:s first poated with graphite. The celluloid blanks
are formed with Unhurried end flanges , and are inserted in the mold,
after which a cap plate is placed over the top of mold so as to
seal the interior, steam is now let into the blank at u pressure
of 40 lbs, per inch, so as to soften the blank and expand it out¬
wardly. . compressed air at a pressure of 100 lbs. per lnoh is now
introduced into the blank and completes the expansion. The top
plate id then removed and the record is allowed to shrink diamet¬
rically until the engaging surfaces are clear, after which the
W.H.M. 3, 12/14/04. '
record falls out toy it3 weight. You will see that the steam treat-*
ment is analogous to our preliminary heating, and that the expan¬
sion toy compressed air is analogous to our expansion toy a taper
plunger. The lam|ert people pretend to claim that with their
process the records are not contracted diametrically tout are,
infact, collapsed. This is a false claim, tout this feature is one
that you should pay very close attention, to. It is an impossibil¬
ity to collapse a Lambert record for any useful purpose , tout in
every instanoe there must be a sufficient codling to result in
diametric shrinking.
1 hand you a copy of some of the testimony already taken
in the Lambert case Which you can read at your leisure, tout I refer
you particularly to the depositions of Philpot, Rusted, Bloom and
Lambert, as weal as the two affidavits of myself and the affidavit
of Hecht. Mr, Dyrenforth has copies of the several patents in¬
volved which it may he desirable for you to read. Please make
careful notes of all that you see, so that we may toe able to call
upon you for a deposition if necessary.
o
Mr. Dyer:-
Attached you will find a report of what X saw on my
recent trip to the Tjambert factory, covering everything I saw. It
seems to me a very strong point should be made regarding the use of
the so called air. pressure. This, I am positive, is not necessary
as a hardener for the celluloid blank, but the benefit derived from
same is the pressure it exert6 in pushing the blank solidly against
the mould. I explained before that it is impossible to / use steam
at this high pressure as it would be too warm and would disintergralP
the celluloid. Kindly advise me if you wish me to make any
experiments for you making celluloid records by the press process.
You said something about it but I do not remember what your
• decision was.
1/23/04.
V. H. Miller.
[ENCLOSURE]
T arrived in Chicago on the evening of Sunday, January
I7th, and reported at the office of Dyrenforth & Lee, and
found that Mr. P. C. Dyrenforth was in New York, and his
brother found it was impossible for him to go to the Lambert
factory, and sent as his representative, Mr. Davies, who he
stated occupied the position of law clerk in his office and
was thoroughly capable.
T then went to the Lambert factory accompanied by Mr.
(Davies and Mr. Nect , and then when we arrived there we met a
Mr. Tyler who said that Mr. Philpot and Mr. Carter would
arrive there in a very short time. I found, after making
inquiries, that Mr. Carter is the mechanical expert for the
Lambert Co.
| The experiments started about 12.30 P. M. , and Mr. Carter
Remonstrated to me the process of making the celluloid record
which is now sold by them. This was done by taking a
celluloid tube , the edges of which were turned over at each
end, the length of our regular Phonograph cylinder, arid I
(believe are purchased by them in this form from the celluloid
manufacturers. This tube was placed in a mould and put in a
(specially constructed machine which is so arranged that after
-he tube is enclosed a cap is put, on the top to prevent the
|S+ea!? Tbe '8team 18 then turned on, and as I under¬
stood Mr. Philpot to say, was about 40 pounds to the square
[inch, this steam had a tendency to soften the celluloid some¬
what and expand it at the same time. This pressure was kept
.on for about one half minute, after which it was turned off,
and a cold air pressure forced in at about 100 pounds to the ,
square inch, so their foreman, Mr. Tyler, informs me, although
jl had no means of proving this statment. At the same time !
it here is a slight vent in the pipe below to allow a constant
?f£?pf,.ot' 7hlch 1 Presume was to carry away any condense
E? £r«there4.!?y steam. T held my finger at this vent
different times during the period the cold air was on and
(found that it was quite warm to the touch, so that the air
can not be called cold. After this cold air pressure was
left on for a period of about one' minute and a half it was
turned off, the cap removed from the top of the mould, and by
|jtne time this was removed and transferred to a bench opposite
jjthe record had shrunk sufficiently to drop out of the mould.
‘There was no effort required to remove it, and no attempt was
made to collapse same.
i „ ,Mr' Carter then attempted to make an experiment which
teas to demonstrate that it was impossible to make a duplicate
of celluloid from the Press Process of Edison's. He had 4 or
Lf blank! 0f about one el6hth of an inch thickness,
r”! °f ,fcbe8e was Inserted into a mould; and inside the
Ithe ?laced a tapered mandrel. The mould, with
^aE?ned mandrel> was placed in an oven and
&aa*®d t0 ab?a* 210 degrees. It was then taken out and the
mandrel was hit several hard blows in order to force the
mandrel further into the cylinder and exert a pressure of the
ceiluloid blank against the mould. It was left in this
C?diti°" fbr » ml«ub® or so and then the mandrel was forced
|put. The mould and blank was then placed in a bucket of cold
water , and after a period of a minute or so, the blank was
(removed, which we were able to do on account of the
df.tbe celluloid, and placed on a machine. I
pund that certain portions of this record was quite as good
jierein satnple tnade by the regular Lambert prdcess as described
[ENCLOSURE]
I found that the main reason that this record was not
,j perfect was caused by the irregularity of the surface of the
!; celluloid blank which was placed in the mould, as I held a
| straight edge against the surface, and found that it had a
ijvariation in some places of more than one sixty-fourth of an
Jjinch. I then suggested to them that in order to make it more
jiperfect it would be necessary to turn the outside off
^perfectly round, and at the same taper as the mould, and they
-attempted to do this, but found it was impossible with the
;j apparatus they had.
iL, They then wished to try the experiment again with another
!] o iank , ana the best one they had was picked out "for the
purpose, and I found by examining it after it was, placed in
|ithe mould that, one end of it was at leastTsixteenXSiameter*-"- • '
jj smaller than at the other, and that the surface was much
jmore uneven than the first celluloid blank experimented with.
|:The operation was carried through as before, and the result
ijwas much more imperfect than the first one. These records
jiwere placed in a box and X suppose they will be shown by Mr.
IjCarter in evidence.
They then attempted to demonstrate to me that the
jiapparatus used by them to make celluloid records with could
snot possibly be used to make duplicates of wax records with,
ijand to prove same an Edison blank was placed inside of their
sraould, put on their special machine and capped over as I
jj explained in the case of their celluloid record, and the
j_steam was turned on, but I advised them to turn it on very
;j moderately as the apparatus was not suitable for a wax record,
sthe wax record having no flange on to expand and prevent the
ji steam from escaping. After this was left on for about one
minute, the record was removed without applying any cold air,
I;a8 T thought it would not be necessary in this case, and I
'found that, while the record was not printed all over its
jj surface , it had indications of record vibrations on it. I
jj explained to them that this was no apparatus to try this
^experiment with, on account of the leakage of steam and the
steam coming in direct contact with the wax would dissolve it.
I explained that the proper way to apply these principles
I would be to have a rubber bag inside of the blank, and capped
! °iir In ihe same manner as they do, which would have the
j effect of heating the blank, and at the same time prevent
the steam coming into direct contact with the wax. In this
jway if the steam pressure was strong enough it would be
unnecessary to use the air pressure. You understand, I
suppose, that in the regular Lambert process they could
readily make a satisfactory celluloid duplicate by increasing
the steam pressure greater than 40 pounds to the square inch
and do away with the air pressure if it were not for the fact
the Bteam Pressure increases the heat also increases,
would be at such a high temperature that it would
iStaianolvc the celluloid. As I explained to you in a verbal
conversation after we had made the first record with the
thick celluloid blank it came out much better than Mr.
Philpot expected, and while Mr, Carter and his man were out¬
side to see if they could .turn a celluloid blank more
satisfactorily, Mr. PhilPot say he didn't Bee why the devil
they were trying this experiment, as he did not see th/ey
were showing anything, and the process was not commercial. He
also expressed himself as though we were trying to keep them
in hot water with law suits, and he said he could stand it if
we could, and had laid a large sum of money away for this
[ENCLOSURE]
)
-3-
?nd ^at/the limited trains were just as
that H t0 rideAn aB for ourselves. He also said
M ! a this case /s decided he was immediately going
o«mfUo4US °n °Ur moul<3e,i He claims he moulded records
°r„s?ven years ago, as he said they used to put
m0uld and allow them to heat and get an
f?" °r sa?0 °n the wax blank in order to test it . Thi
Prtvfpna 1 tunl *he early day8 ot the business. He also
advised me that he had several suits against Petit, and that
i°I1^nt1ily iald ?side $25000 tor this purpose , and he finds h
orSno d?t? has cost him about $8000.00 with litt
the nelr future! ’ eXP6Cts t0 PVt hlm °Ut 0f bU8lness 1»
le
i|
January 26,1904,
Lambert suit .
Philip C.Dyrenforth, Esq.,
; Monadnock Bldg.,
i Chicago, Ill.,
Dear Mr. Dyrenforth:-
My brother cannot come to Chicago and I have
therefore decided to go there myself and will see you early Mon¬
day imorning, Eebruary 1st. I can spend the entire week with you
assisting in the cross-examination of Philpot and Carter. On Eeb-
rutuy 8th I have to argue before the Circuit Court of Appeals at
Hew, Orleans and will therefore have to leave Chicago not later
than. Saturday. I shall probably reach Chicago Sunday afternoon
on the Chicago Limited of the Pennsylvania Railroad, unless I tele¬
graph you to the -contrary, and I wish therefore that you would have
some oner from your office meet me at that time with a,' copy of Car¬
ter's deposition, so that I can, look it over Sunday evening.
i With regard to Philpot's deposition, his position is
utterly contradictory of the position taken by hlmjkt the, time
the preliminary injunction was dissolved. Bor1 instance ,., in his
present deposition he states that the company is, not; working , under
the Lambert .process, but is working under the Messer process,, and
in his affidavit of June 18,1903, (see our reoord on injection
motion, page 87,) he said that they were operating under the Lambert
process. lie now says (Q'e 26 & 27) that the record* shrinksso as
to fall put of the mould hy its own weight, but in his previous
deposition (XQ54, p.101 and XQ59 p.102) he Baid that the record
required to be collapsed bo as to be withdrawn. It was because
of this latter allegation you will remember, that Judge KolhBaat
dissolved the injunction originally, so that Philpot tacitly admits
that the Judge was mislead. The Philpot deposition' in its entirety
is unreliable and equivooal and I think oan be pretty effectively
disposed of on a vigorousl oross-examination. I aaggest these
points to you in order that you may Btart in with the cross-examin- .
ation of Phiipot if Sheridan evinoes any disposition to take any
advantage of the short dslgty which will be incurred by my not appear
ing before Monday.
pld/hgw
Yours very truly,
January 29,1904
Walter H. Miller, Esq.,
Orange , New Jersey.
Dear Sir:-
Your memorandum of the 23rd. Inst, has been received
enclosing report on your visit to the Lambert factory, and for isfaich
I thank you.
It Y70uld appear that the testsmade hy Mr. Carter are
favorable to our contention. .Of course, tfye reason why he ms
unable to get better results with the Edison apparatus with tapered
plunger is due to the fact that the blank was very imperfect; but
nevertheless the Lambert people will try to argue that the Edison
apparatus is not susceptible of use in the manufacture -of celluloid
records.
I think, therefore, it would be well for you to get
hold of a reasonably perfect celluloid tube, and show what can be
done with that apparatus. If possible, 1 should like to have thiB
done right away, because 1 expect to leave for Chicago to cross-
examine Mr. Carter next Friday.
Yours very truly.
FLD/faM.
Dear Hr. Dyer;
I finished the cross-examination of Mr. Carter yesterday
afternoon, and the re-direct v/as concluded this morning. I in¬
close a copy herewith. In ray opinion the assertion that the
defendant company is following the process of the Young' British patent
is completely refuted, and I think that you will agree with me.
The Young patent definitely prescribes that the celluloid blank is
to be of the same size as the master record, and the cross-examina¬
tion shows that in practicing the method of the defendant, when a
blank too closely approximates this size, it is rejected and a
smaller one used in place of it. In the light of Mr. Carter's
last experiment I am more than ever convinced. that where the Young
process is accurately followed the record cannot be removed from
the matrix without collapsing, in the proper sense of that term.
No such experiment has been made by Mr. Carter, and I believe that
if you have the facilities for making it our contention will be
demonstrated. Of course Mr. Carter's last experiment proved
nothing, because there v/as a clearance between the blank and the
cold matrix and the only effect of preliminarily heating the
matrix as he describes, could be to prolong the operations with the
steam and cold air, as he states. If Mr. Carter ever made the
really, material test (that of employing a very thin blank of the
same diameter as the master record, introducing it into a :
matrix expanded by heat and then softening, expanding and cooling
the record cylinder) he was careful to say nothing about it; v/hich
leads me to suspect that he may have made such an experiment and
that it failed.
Please read over the cross-examination and let me know
■whether you think it advisable to question Mr. Carter on any other
subjects. If you do I can no doubt arrange to have him recalled
for further cross-examination.
You will observe that Mr. Carter has testified that the
-1-
Frank L. Dyer, Esq. Ho. 2.
•P.C.D. (W) Feb. 19, 1904,
height of the threads on the Lioret cylinder would probably be about
l/64th of an inch in practice; and I believe that with threads of
.this depth the record could not be got out without unscrewing, as
expressed in the lioret United States patent. Mr. Carter admits
that the "electro-plastic mold" could not be removed from the
steel master record without unscrewing, as stated in the United
States patent, although there is no mention of unscrewing in the
British patent. This at least affords ground for argument that
the United States specification is only more explicit than the
English one, not only in this behalf but also in the matter of
the removal of the record. If this fact can also be demonstrated
it will of course be so much the better.
Mr. Carter spent a considerable time over Webster's
Dictionary in an attempt to support his use of the word "collapse"
but finally gave the matter up and answered as he did.
The general purpose of my cross-examination was to show,
as much by the questions as by the answers, the speciousness and
unfairness of his testimony given on the direct, and to my mind this
is sufficiently shov/n. His contention that the defendant in
practicing its present method is absolutely following the directions
or the Young specification is manifestly unwarranted and absurd.
However, as to all this you vd.ll he able to judge for yourself.
I am unable to get Mr. Dhilpot for cross-examination
today, but I may be able to get him for a short time tomorrow fore-
,nr00”* not, I cannot begin with him until Tuesday morning, since
Monday will be a public holiday. Mr. Sheridan has definitely
refused to stipulate into this record any testimony from the
American Graphaphone Company record. I made the offer if he
would stipulate in the testimony, to recall the witnesses for further
but he said that he wished to have them examined
originally in this case if at all.
I suppose I am right In sending the inclosed copy of the
cross-examination to you instead of to Mr. Richard H. Dyer.
Very truly yours,
Lambert suits.
February ,23/04.
F.C.Dyrenforth, Esq.,
Monadnock Bldg., |
I Chicago, Ill. f
Dear Mr, Dyrenforth:-
Your favor ;of tho 19th instant has boon re¬
ceived enclosing copy of Mr. Carter’s cross-examination. I have
readmit ovor with interest and do not see how it can bo improved.
The spaciousness. of his argument: and his general lknfairnoss are
evident on the face. As I said? to you- in Chicago, it seems to
mo that the Young patent at .least, is forever and completely dis¬
posed of by the statement' -made by Lambert in his original appli¬
cation that lino Young patent is .entirely inoperative and that ho
had frequently tried without success to carry that process out.
I 'am having experiments made here under my direction with both
Young and Loirot so as to bo able to make a satisfactory reply to
Carter's arguments.
I note that Mr. Sheridan4 has definitely refused
to stipulate into this record any testimony taken in the grapho-
phono case. Perhaps it is Just as well that this should be so', ,
because1 1 novfind that Mr. Edison was mistaken in saying that
he made no celluloid records before 1900. As a matter of fact.
very thiri material .as suggested by Young. I look forward
with interest to the result of Fhilpot's cross-examination.
Yours very truly,
vLv/my
a- . ■
National phonograph Co, vs. Lambert Co:
P. C. Dyrenforth, Esq.,
Monadnocl: Building,
Ohio ago, 111.
My dear Sir: —
I am in receipt of a copy of your letter of the 17th
inst. to Me carb . Dyer & Dyer, together with a copy of Judge Kohl-
saat's opinion in the above case. My brother ia away on his vaca¬
tion, bo that I have not had an opportunity of discussing the case
with him.
Naturally, the decision is a surprise and disappoint¬
ment to mo as it was td yojiju Judge Kohlaaat haB in some way obtain¬
ed an entirely wrong idea of the case. He assumes that the process
was perfected in 1880, when as a matter of fact the interference
record shows that the process was not coamercially developed until
shortly before the application was filed. This was settled in the
Patent Office during the prosecution of the interference. He also '
assumes that "a great many copieB of records made from matrices
were placed upon the market" - presumably two years before the ap¬
plication wqb filed. The fact is that molded records were not used
as masters for mechanical duplicating until 1897, He then appears
to assume that Edison abandoned the process and took up mechanical
P.C.Byrenforth, Esq.... 2
duplicating and that after doing so, the Lambert Company appeared
on the field and developed their business. Apparently then, Edison
did not resume the patented process until Ju3y 1, 1902. As a mat¬
ter of fact, on July 1, 1902 the specific process of the patent
was abandoned, as 1 mate perfectly clear in my testimony, which
Judge Kohlsaat has confused with Edison's, but it had been used
continuously up to that time and the subject matter of the second
and third claims is still used.
1'he intiro opinion is so absolutely mistaken that it is
very difficult to tell just what theory the Judge had in mind, it
occurs to me that possibly in view of the obvious errors, a motion
for rehearing would be in order, and 1 wish you would give me your
view on thin point. At any rate, we will certainly wish to take an
appeal.
JLD/ra*.
Yours very truly,
31 Massau St., Hew York, H. Y. 27
Gentlemen: A /
This afternoon I received your telegram referring to tiie'"
papers for a rehearing, and a few days ago I received a letter
from Mr. Prank L. Dyer, dated August 19th, in the course of which
he asked my views concerning a rehearing. I have been considering
the subject and up to the present time I have not fully made up
my mind as to whether it will he better to apply for a .rehearing
or proceed at once to the appeal, though all along I have felt
inclined to the latter course. I doubt very much that a rehearing
would change the result in the lower court. Moreover, it would
entail a considerable delay and might result in a decision against
us on more rational and logical grounds than those given in the
opinion which has been rendered. The errors in that opinion are
so flagrant that they cannot fail to help us in the Circuit Court
of, Appeals. On the . other hand, I think that Judge Kohlsaat had
very little to do with the decision of the case in his court. He
was illff or several weeks and I have reason to believe that the
opinion was actually written by Mr. Whitney, his former secretary,
and that Judge Kohlsaat merely accepted it without extended inves¬
tigation of the record, if indeed he made any investigation at all.
Therefore, if in an argument o a rehearing the errors should be
clearly and pointedly.impressed upon Judge Kohlsaat he might come
to an opposite conclusion. These opposing ^considerations have bee
•been in my mind since I received Mr. Prank L. Dyer's letter. How¬
ever, as I have already said, I incline to the belief that the best
course will be to proceed forthwith to an appeal.
Very truly yours „
S. August 25, 1904 ^
The foregoing letter was dictated last evening, but hot
transcribed until this morning. I have just- received Mr. Prank’
L. Dyer's letter of August 23rd, which makes the matter of the
telegram clear. Under the circumstances I can understand the
policy of an application for rehearing.
P.C.D.
IN THE
United States Circuit Court of Appeals
FOR i HP JJKV H N T IT I Ilif'Uri
October Term, A. Ei. 1904. 1 -
No. 1154. ,
NATIONAL PHONOGRAPH -COMPANY;
( . - ?*,. . * •• * Appellant, ' ;/ _ ; - . •' ‘ - ^ ■
LAMBERT COMPANY,
( \Ap pcllcc.
RICHARD N. DYER,
PHILIP C. DYRENFORTIlj
. ' ‘ , , i Counsel for And
United States Circuit Court of Appeals
FOR THE SEVENTH CIRCUIT.
October Term, A. D. 1904.
No. I 1 64.
NATIONAL PHONOGRAPH COMPANY,
Appellant,
LAMBERT COMPANY,
Appellee.
1. Reply to Appellco’s Arguments.
2. On the Opinions of the Court Below.
3. Authorities 9n Issues Raised by Appellee.
REPLY TO APPELLEE’S ARGUMENTS.
In the brief time allowed for a reply to appellee’s argu¬
ments, it is not practicable to do more than refer to the
salient points, particularly such as are not fully covered by
the appellant’s main brief, including some matters not em¬
phasized at the argument which appear in appellee’s brief.
ABANDONMENT UNDER THE STATUTE BY TWO YEARS’ PUBLIC
USE PRIOR TO THE FILING OF EDISON’S APPLICATION.
At the argument the point was made by appellee’s coun¬
sel that the present case comes within the rule announced
by the Supreme Court in Smith and Griggs Mfg. Co. v.
Sprague namely, that where it is clearly shown that there
was a public use of an invention by the inventor for more
than two years prior to the application, the burden rests on
him to establish by convincing proof that the use was for
the purpose of perfecting an incomplete invention by tests
and experiments.
We assert that the present case does not come within that
lule, because it lacks the clement of a clear'showing of pub¬
lic use more than two years prior to the application, which
is the essential condition of the rule. The only use made
of the invention prior to 1897, when Edison began to prac¬
tice the process commercially, was the use made by Edison
and his assisting experimentalists in Edison’s laboratory
for the purpose of perfecting the process.
The argument was also made, based upon Eastman v.
Mayor (134 Fed., 844), that the nine years occupied by
Edison in his experimental work -was one of unreasonable
length— indicating that the excuse that that period Was de¬
voted to experimental work is not a bona tide one. If not
for the purpose of experiment what use was made of the '
time? Edison made no profit out of the work during this
interval. He spent twenty-mine thousand dollars and em-
ployed at least one man continuously on the work. Do con¬
tinuous work and continuous expenditure of this character
. indicate an intention, to abandon the invention? When the
complicated character of the process is considered and the
delicacy of. the various operations understood, the time re¬
quired to perfect the process does not appear unreasonable.
It as probably true that Edison might, by' expending one
hundred thousand dollars on the work and the employment
of a number of men, have perfected the invention within a
shorter time. But as he himself says, there was.at the time -
' I,ttle or 110 deniand fr°™ ‘he public for the phonograph and
its adjuncts. He had faith that that demand would eventu¬
ally arise -and he expected by the course he was pursuing
to have the process perfected in time to meet that demand.'
The result shows that his judgment was sound. Surely,
under these circumstances, an inventor is not required to do
more than keep one man continuously employed upon per¬
fecting an invention, or spend more than three thousand
dollars a year for that purpose. And it should be remem¬
bered that, even though Edison took nine years to perfect
the invention, he reached the goal before anybody else, and
consequently no question of intervening rights arises.
VALIDITY OF EDISON’S PATENT.
It is asserted that Edison’s patent is invalid in view of
the patents of Lioret and Young. These patents are fully
treated in the complainant’s main brief (p. 48, ct scq.).
That they describe inoperative and useless suggestions is
not only proved in this case, but was also asserted by the
appellee’s predecessor during the prosecution of the Lam¬
bert application, which was in interference with Edison.
Further than this, both Edison and Lambert, while in the
Patent Office, amended their claims so as to distinguish in
terms over the Lioret and Young disclosures, and one of
these claims was made the subject of. the interference be¬
tween Edison and Lambert, which was decided in Edison’s
favor. While the defense of invalidity based upon these
patents is open to the appellee here, it comes with poor
grace from the appellee to assert that the invention, which
it convinced the Patent Office was patentable, and upon
which it contested an interference, is in fact not patentable
because of the same- prior matters which were referred to
by the Patent Office. ' Judge Platt, in the. opinion which is
printed at the end of appellee’s brief, finds with . regard
to the Lioret and Young patents that they involved, respect-
ively, the features of “unscrewing” and “collapsing” which
I >oth Edison and Lambert asserted in the Patent Office they
involved, and which features were made the basis for the
distinctions over those patents. The fact that the Lioret ,
United States patent contains a claim couched in general
terms would seem to he an immaterial consideration.
INFRINGEMENT.
Appellee’s argument upon the question of infringement
is of a two-fold character. Appellee asserts that it does
not employ a blank sufficiently thick,” etc., which is
specified in some, but not all, of the claims in issue, and that
the process which it employs is in general a substantially
different process from that described and claimed in the
Edison patent.
Regarding the first element of this argument, it is ex¬
plained in, our main brief (p. 73) that the expression “suf¬
ficiently thick,” etc., was intended to distinguish a self-sus¬
taining blank thick enough to receive a surface impression
from the film-like blank suggested by Young, which is so
thin that the impressions received from the mold appear on
the back of the film-like sheet, and which is also so thin
that the blank is not self-sustaining or capable of preserv¬
ing its form either before or after the mold impression is
taken. This distinction was made by Lambert in the prose¬
cution of his application and was accepted by the Patent
Office. The difference between a celluloid blank having
a thickness of eighty-thousandths of an inch, formerly used
by the appellee (and admitted by appellee’s counsel at
the hearing to be “sufficiently thick,” etc.) and a celluloid
blank having a thickness of fifty-thousandths of an inch
now used by the appellee, does not change the character
of the blank with respect to this feature. (Brief, p. 87.) •
The blank is still self-sustaining and has a thickness at
1
least fifty times the depth of the deepest mold impressions,
as indicated by the illustrative drawing on page 301 of the
record.
Regarding the argument that the appellee’s process is
in a general way different from the process of the Edison
patent, it is to be observed that appellee’s process is step
by step a counterpart of the Edison process. The appellee
produces a mold in the same way, inserts .in the mold a
blank of the same character, softens the blank by the appli¬
cation of heat, expends the softened blank against the mold
by internal pressure, and contracts the impressed blank away
from the surface of the mold by a reduction in temperature
sufficient to entirely clear the surfaces and permit the longi¬
tudinal withdrawal of the duplicate from the mold. These
are the steps of the process described in the Edison patent in
suit. The material, celluloid, used by the appellee is one
of the materials specifically referred to in the Edison pat¬
ent, as useful for the purpose. The use by the appellee
of an air-pressure to expand the blank instead of a tapering
mandrel is an immaterial difference. The tapering mandrel
could undoubtedly be used with celluloid blanks, although
it is probably true that the air-pressure is more convenient.
Edison’s patent is, however, for the process and the instru¬
mentalities employed in carrying it out are of secondary im¬
portance. The advance made by Messer, which is lauded
by appellee’s counsel, was exceedingly slight, as shown
in our main brief. The most that can be said is that the
appellee has developed the details of a process well adapted
for the making of. celluloid duplicates; but it did this, ad¬
mittedly, after the decision against Lambert in the inter¬
ference case and with full knowledge that it was developing
a process which Edison had previously developed with some¬
what different details and upon which Edison was endeav¬
oring to secure a patent.
The argument advanced by appellee’s counsel and em¬
phasized at the hearing, namely, that in view of the dis¬
tinctions sought to be drawn over the Lioret and Young
patents during the prosecution of the Edison application,
by the affidavit of Wurth and the accompanying arguments
of Edison’s solicitor, the claims of the Edison patent should
be limited, beyond what is required by their terms, to de¬
tails not employed by the appellee, is not warranted by the
facts. As pointed out in bur main brief (p. 83) this argu¬
ment was not accepted by the Patent Office ; and tile distinc¬
tions over Lioret and Young which were accepted by the
Patent Office were those which appear in terms in Edison’s
claims. Under these circumstances the authorities (Brief,
p. 84) are clear that distinctions advanced argumentatively,
not accepted by the Patent Office and not embodied in the
patent by changes in the claims, are not carried forward
into the grant and cannot be used to limit the scope of the
The proposition of double patenting which appears in
appellee’s brief was not emphasized at the argument and is
not referred to in appellant’s brief. It is based upon the
earlier grant of Edison’s patent No. 667,662, which covers
the casting process and which was issued upon an applica¬
tion filed two years later than the application for the patent
in suit. Referring to the claims which arc printed on page
47 of appellee’s brief, it will be seen that the claim of this
casting patent there referred to for purpose of comparison
includes the element of "introducing a molten, material into
the mold.’’ The two patents are based upon different inven¬
tive disclosures. While it may be true that claims 2 and 3
of the patent in suit (although Judge Platt thought other- '
wise) cover an invention broad enough to include the cast-
natent n !• ' ^ “,e C'aimS °f the Mating'
patent are limited to the specific disclosure of that patent
anti could not be based upon the specific disclosure of the
patent m suit. The patent in suit, covering' the broad in-
■ e t.0.1 and based upon the earlier application, was held up
m the Patent Office by interferences, so that the later spe¬
cific or improvement application became a patent of earlier
date; but under these circumstances the authorities are clear
that the patents are to be regarded in the order of their
applications and that the patent of earlier date based upon
the later application cannot, be used to limit the scope of
the patent of later date based upon the earlier application.
Thomson-Hous ton Co. v. Elmira Co., 71 Fed
39°.
Thmnson-Houston Co. v. Ohio Brass Co., 80 Fed.,
Westinghouse Co. v. Dayton Co., 106 Fed., 724.
The case before Judge Platt was based upon two patents,
the patent in suit and Edison’s casting patent No. 667,662.
The question of infringement was different there from what
it is here. The defendant there used the casting process
Consequently only claims 2 and 3 of the patent in suit were
involved in that case. Judge Platt disposed of the conten¬
tions regarding claims 2 and 3 of the patent in suit by find¬
ing that these claims were not infringed by a casting process.
(Defendant’s Brief, top p. 166). It is not at all certain
that if the defendant’s process before Judge Platt had been
an expanding process, as it is here, lie would not have found
infringement of claims 2 and 3 in favor of the complain¬
ant. His conclusions as to the Lioret and Young patents
(Defendant’s Brief, p. 162) are favorable to the appellant
in this case. The record before Judge Platt was also
quite different from the record in the present case. It is
needless to add that, Judge Platt's opinion is subject to re¬
view by the Circuit Court of Appeals for the Second Cir¬
cuit and hence cannot be regarded as the final word even in
that case — much less in the present case.
CONCLUSION.
The position of Edison as a pioneer in this art is admitted.
The possibility of duplicating phonograph records was re¬
ferred to by Mr. Edison as early as 1878 (Rec., p. 297).
For years, however, this possibility existed only as a mere
speculation. The difficulties, to the ordinary nitnrl. would
appear insurmountable. The problem to be solved was the
exact copying of several million heterogeneous, closely as¬
sociated and excessively minute indentations, each having
its characteristic form. This copying must not lie merely
approximate, but must be so exact that to the ear the fine
variations in pitch and tone, and the delicate shading as to
quality, must be faithfully reproduced. Not only this, but
a successful realization of Edison’s early aspirations in¬
volved not the duplication of a phonograph record as a mere
scientific possibility, but as a commercial proposition, at a
sufficiently low cost and in such a manner that the work
could |,e done in an ordinary factory by ordinary workmen.
Although in lus early patents of 1878 (Rec., pp. 297-298)
Edison suggested a number of possible ways by which
phonographic duplication could be effected, it was not until
us caveat of 1888. that he had a definite conception of a
successful process by which the long sought for solution was
presented. Even then the bare suggestion only was made,
and the succeeding years of experimenting were necessary
0 bring the process to the desired degree of refinement to
f °” y COmmercia1’ but secure the desired ac¬
curacy of duplication. As the records show, these experi¬
ments were continuous and involved a yearly expense of
more than $3,000, amounting in the aggregate to some¬
what more than $29,000. By 1897 the process was per¬
fected and duplicates made thereby were, for the first time,
used commercially.
Simple as the process may now appear to be, its com¬
pletion represented the realization of twenty ’ years of
thought and hope and nine years of continuous and expen¬
sive experiment. One of the most difficult things in the
world is, after the accomplishment of a result, to put one¬
self in the mental attitude of the inventor before the accom¬
plishment of that result. In the present case, however, there
,'s> ,ve =ubimt, ample evidence in support of our contention
that the duplication of a phonograph record, far from being
an obvious thing, was in fact an almost hopeless problem.
For instance, in Edison's patent No. 382,419, dated May 8,
1888 (Rec., p. 744), a process is described in which the
attempt was made to duplicate a phonograph record by a
knurling operation ; but it is admitted that such a process is
practically inoperative and certainly uncommercial. In Edi¬
son’s patent No. 784,582, of October 18, 1892 (Rec., p.
766), his application for which was filed prior to the caveat,
a process is described for duplicating phonograph records
by casting in a split mold ; but it is also admitted that such
a process is commercially inoperative. Even after Edison’s
caveat was filed and after his long period of experimenta¬
tion had commenced, Lioret obtained his American and
British patents, which also describe inoperative and uncom¬
mercial processes and which have never passed beyond the
patents themselves. Finally, the British patent to Young,
granted in 1894, more than five years after the filing of the
caveat, likewise describes a practically inoperative and un¬
commercial process. If, as' contended by the appellee, the
process suggested by Edison in the patent in suit was an
it that Edison himself early in 1888 was suggesting inopera¬
tive knurling and casting methods, and Lioret and Young in
1893 and 1894 were suggesting equally inoperative and un¬
commercial operations ? The only answer must be that
for some reason— either the inherent difficulties in the prob¬
lem, or an incorrect understanding of the situation, or a
misconception of the various phenomena involved — the solu¬
tion of the difficulty was utterly beyond the ordinary skill
of the workman in this art.
At the hearing it was urged by the appellee that the suc¬
cessful process involved nothing more than the introduc¬
tion of a blank in the mold disclosed in Edison’s patent
; o* 4 4>s82 (Rec., p. 766), arid its subsequent expansion,
the removal of the duplicate following as a natural conse-
quence. This is not a correct statement of the invention
of the patent in suit, which necessitates a much finer analy-
sis. io carry the invention into effect the process involves
the following essentials :
i- An electro-plated mold :
(a) With cylindrical continuous walls, so that the re¬
sulting duplicate shall not be formed with fins or burrs, as
would be the case with the split mold as disclosed in Edi¬
son s patent No. 484,582.
(b) With a record in relief nn ,, , ,
prox°matehlvTtert-relntiVte ‘° ^ Width (the "’hhh beingap-
n en of tt T "? ,‘he dePth> as to !*™it ctaach-
jurv to the dfrP I' byld'ametric contraction without in-
comrlctlon1 SUrfaCC by — »f longitudinal
slightly smaHer°^UCr0,n lnt° tbe mo*‘* a cylindrical blank
2 ! S '? dr*Cr than the tore- ^id blank pre-
senting a body of suffic.ent thickness to maintain its shape
without collapsing during the act of engagement with the
record surface and of sufficient thickness to take a surface
impression of the record without being bodily distorted, and
capable of responding with sufficient force to variations in
temperature to detach itself from the mold against the
natural suction produced by atmospheric pressure ; and of
a material having the following characteristics :
(a) Capable of being softened to receive a surface im¬
pression and when cold to retain that impression in all of
its delicate and highly diversified minute contours.
(b) Having a coefficient of expansion differing in such
a dep-ee from that of the material of the mold that by a re¬
dact. 0.1 ... te...perati,re common to lxith, contraction of the
duplicate will so exceed the contraction of the mold that
the engaging surfaces will be separated to clear the inter¬
locking impressions and permit the duplicate to be readily
removed by a direct longitudinal movement.
(c) Having the inherent tendency or such coherence of
its particles as will permit the duplicate to be shrunk from
the mold without detachment of any portion of its record
surface. In other words, the material must have the prop¬
erty of setting, so that the record surface will be fixed or
permanent before the separation from the mold takes place.
(d) Presenting a sufficiently smooth surface to give
satisfactory reproduction.
Of materials having these peculiarities, both Edison and
Lambert disclose the use of celluloid, although Edison, for
commercial reasons, prefers to employ a hard soap of which
phonograph records are commonly made.
3. Softening the blank to such an extent that rit may
readily conform its surface to the record impressions car-,
ried by the mold to correspond accurately with the latter.
4. Expanding the blank so softened to receive such
impression by internal pressure, applied either by a tapering
mandrel, as suggested by Edison, or by compressed air, as
employed by the appellee, or in any other equivalent and
.well known way.
5. Subjecting the duplicate to a reduction in tempera¬
ture to cause it to shrink diametrically and clear the engag¬
ing surfaces, notwithstanding the concurrent but smaller
reduction in diameter of the mold, thereby permitting the
duplicate to be withdrawn without injury to the record.
l'rom this analysis it will be clear that an intelligent con¬
ception of an operative duplicating process involved much
more than the very bald and general statement made at the
hearing by the appellee, and necessitated not only the man¬
ufacture of an accurate mold, hut the selection of materials
having special characteristics, the observation of special di¬
mensions, and proportions and the carrying out of special
and delicate manipulations. Patentability of Edison’s process
(and by this we mean patentability in the broad sense) can
lie safely predicated on the following propositions:
1. Under the authorities the patent is prima facie valid
and the claims should Ire given their natural interpretation.
2. This presumption is much strengthened in the pres-
.!’ <TSe 7 of tl,e interference with Lambert and
he several other interferences in which the Edison applica-
pendinef befnr V tl " °th.er 'VOrdS’ instead of tl,e «RPKcation
suafin i eXamineral0ne as an ex parte matter, as
eximinl 1 J T! T5' !he application was considered by the
tion to dissl/" •; h,fCr partes 0,1 Lambert’s mo-.
S nts.o'U T“ C°nSidCrcd * the commissioner of
patents on the appeal on that motion; it was considered by
- “c^U,er nC"? °" ‘he mcrits ofStSiS
and it I C°nS d°red ^ the e-Naminers-in-chief on appeal •
««d n was considered by the commissioner for a second
time on the merits. Under the practice it was the duty of
any one of the patent office tribunals before whom the case
came to indicate any reason why the claim should not be
allowed, and notwithstanding the fact that the Lioret and
Young patents were in the records of the Edison and Lam¬
bert applications, there existed no doubt in the minds of
the patent office officials that the subject-matter of the 17th
claim, on which the interference was contested, was patent-
3. The invention was one that was long sought, and
when it came it immediately supplied a public demand.
• Edison was admittedly the first to make a molded duplicate
phonographic record.
4. The Lioret and Young patents were fully considered
by the examiner, and the Edison claims were drawn for the
express purpose of distinguishing from those references.
5- Lambert contended, both in the prosecution of his ap-’
plication and as a witness in the interference, that neither
the Young nor the Lioret process was operative.
The situation, then, presented to this court is this: Hav¬
ing anticipated the possibility of duplicating phonograph’
records in 1878, Edison conceived in 1888 of the instrumen¬
talities by which that speculation could be realized,' and as
a result of continued and expensive experiment accomplished '
the result in 1897 and applied for his patent promptly there¬
after. During these experiments Young and Lioret rushed
into the patent office with crude and undeveloped sugges¬
tions which never materialized and which were clearly in¬
operative. Appellee’s predecessors filed their application in
1.899, secured their patent by accident, were placed in inter¬
ference with Edison, vigorously contested the same and were
defeated. No more solemn notice of Edison’s claims can be
imagined. They went ahead after the termination of ’the
interference at their peril. Undoubtedly tile appellee is do¬
ing what Edison in 1878 hoped to do. In our opinion, no
less strongly, appellee is doing that thing in a way equiva¬
lent to the way suggested in Edison’s patent. And in our
opinion, and no less strongly, Edison made a patentable
invention on which he secured claims which are capable of
a broad interpretation which will include appellee’s opera¬
tions. As a matter of fact, we believe that up to the time
ot Judge Kohlsaat’s decision on final hearing the appellee
should have been under the ban of the preliminary injunc¬
tion issued by Judge Kohlsaat and set aside by him as the
result of fraud and misrepresentation on the part of appel¬
lee. Yet the fact is that notwithstanding the termination of
the Lambert interference more than four years ago and the
issue of the Edison patent more than two years ago, the
appellee is still enjoying the fruits of its piratical operations.
And in defense it relies principally on the purely technical
point decided by Judge Kohlsaat that the invention was
abandoned by Edison during the period of his expensive and
continuous experiments and before the invention was re¬
garded as completed. Coming as he does before this court
with a patent having not only the usual but, in view of the
circumstances, the unusual presumptions of validity in its
favor, disclosing an invention which is undoubtedly new,
an invention by which the hopes and aspirations of twenty
years were realised and by which the seemingly impossible
was accomplished, is he to seek in vain for the broad pro¬
tection to which we think lie is entitled, or is he to be put
m the category of the inventor who makes a small and
mmor improvement and be confined to the exact details of
his process to which the claims in terms are not limited?
We believe that when the record in this case is carefully
THE OPINIONS OF THE COURT BELOW— COM¬
MENTS THEREON BY MR. DYRENFORTH
AT THE HEARING.
Two opinions have been rendered in tins case, the first
opinion on the argument on final hearing and the second
on a petition for rehearing. Neither opinion holds that
the claims in issue are invalid in the light of the prior art:
neither opinion holds that the process practiced by the de¬
fendant is not an infringement of the claims in issue. But
the first opinion (Record, p. 620) dismisses the bill for
want of equity chiefly on the ground that Mr. Edison un¬
reasonably delayed filing his application for a patent, while
the second opinion (Appellant’s Brief, Appendix VII),
though not in terms retracting the ground of dismissal of
the first opinion, asserts as the main ground for denying
the petition that the process had been experimented with
by Mr. Edison before his numerous employes with no effort
to maintain secrecy, so that the patented matters were made
public more than two years before the patent was applied for.
Each of the opinions is filled with errors of fact as well as
of law.
As to the first opinion.
1. In the first paragraph (R., p. 620), the court says:
"On October 26, 1888, complainant filed in the pat¬
ent office a caveat for a process of forming duplicate
phonograms by forcing material made plastic by heat
agamst a matrix formed upon the inside surface of a
circular die and then permitting it to cool.”
2. In the next paragraph the court says :
The caveat asserts that the phonogram will con¬
tract sufficiently away from the record to allow of it«
being taken out.”
This is also correct.
3- In file next paragraph the court says:
“From October 26, 1888, to March 5, 1898, tlie date
of the application, no steps were taken by the patentee
to secure a patent covering the matters set out in the
caveat.”
This is also correct.
4. Following this the court says :
“From the testimony of Mr. Edison it appears that
during that period of ten years the process was in use
in Edison’s factory.”
THIS IS INCORRECT. All the testimony in behalf of
the complainant in this case on the subject of Mr. Edison’S
development and use of the process in issue is to the effect
that for at least nine of the ten years mentioned the process
was solely in the hands of Mr. Edison’s experimenters, Dr.
Schultze-Berge and the Worths, father and son, whose work
was confined to Mr. Edison’s laboratory. No doubt
the court below was misled by Mr. Edison’s testimony on
page 270 of the record, which is as follows:
“14 Q. When did Mr. Wurth start in on this work?
A. In the spring of 1889.
"15 Q. Has he been practically continuously work¬
ing on the process from that time until the present ■
time? A. Yes, sir; nearly the whole of his time.
“16 Q. And I presume he has made a large num-
ber of these molds and has produced copies therefrom
by an expanding process as you describe above? A.
Yes, sir; he has produced a great many matrices, and
lias produced a great many copies from the matrices
by expansion, which have been used commercially.” •
What Mr. Edison says is fully til accord with the other
testimony, but it does not mean that the records made by
the process were used commercially during the entire ten
years, as the lower court appears to assume. On this same
point Mr. Wurth testifies as follows (Record, p. 887) :
"47 Q. Having reference to the records made, for
example, in 1897, what were they used for; do you
know what they are used for? A. They are used as
masters to make machine duplicates from.
“48 Q. So that, in 1897, as I understand it, you
considered the resulting duplicates to be substantially
perfect; is that correct? A. Yes, sir; it was consid¬
ered good.”
There is not a line of testimony in the entire record
which mentions any commercial use of the process earlier
than that, given above by Mr. Wurth. In fact, a commer¬
cial use of the process could not reasonably have occurred
earlier than about the year 1897, because prior to that time
there was almost no market for duplicates. On pages 274
and 275 Mr. Edison testifies as follows :
“46 X-Q. You knew, of course, all the time be¬
tween 1888 and 1898 of the value that process would
have in the arts, did you not? A. I knew in the last -
two or three years of its value, but in 1888 the phono¬
graph was not commercial, and the company which at¬
tempted to commercialize it went into bankruptcy. It
was not until seven years later that the public became
a buyer of phonographs, but I always believed that
hey ultimately would appreciate the invention and,
therefore, I worked continuously on this process with
r0,™ lf 'voulcl be of great value, whai
, p b!jC “d ta^e hold, which they did in the last
two or three years."
5- The court then says:
“A great many copies of records made from mat¬
rices ivere placed upon the market.”
Hus is correct in one sense, but is incorrect in the sense
m which it was evidently intended by the court. The testi¬
mony shows that from about the year 1897 onward, and
until July, 1902, copies (mechanically produced) of records
made from matrices were placed upon the market. It will
, soon appear that the court was under the impression that
the copies made from matrices were themselves placed upon
the market, which is not the fact. If it had been the fact,
however, it would not have affected the rights of the com¬
plainant. Even if Mr. Edison had publicly used the process
for two years prior to his application for a patent he would
have lost none of his rights thereby.
6. Further on the court says :
‘‘The record disclosed the fact that no particular ef¬
fort was made to maintain secrecy among the employes
m regard to the. process. The fact that phonograms
were placed upon the market in great numbers is satis¬
factory evidence that the process was a commercial suc-
THIS IS ALSO INCORRECT, since phonograms made
■ by this specific process have never been placed upon the
market by the complainant, though shortly before the filing
of the Edison application, the process .of the patent in suit
was used1 in the Edison factory for commercial purposes—
that is, molded records made by the patented process were
used as masters from which so-called mechanical duplicates
were made, and the latter were sold.
The testimony of Mr. Wurth already quoted from page
287 of the record shows that mechanical duplicates of rec-
ords made by the process of the patent in suit were on the
market as early as 1897. Mr. Edison testified in February,
1901, and at that time the complainant company was still
marketing these mechanical duplicates. On pages 271 and
272 of the record he testifies as follows :
“22 Q. What are the duplicate copies made by this
process at the present time used for? A. They are
used as masters in the mechanical duplicating process,
because they are so perfect that they are indistinguish¬
able from the original master.”
The cc
t then says :
“Mr. Edison, himself, says: Answer to question
18: ‘The process was, in a broad sense, just the same
The showing is, however, that what the Edison caveat
of 1888 disclosed was nothing beyond a mere project. About
nine years of persistent, laborious and extensive experiment
followed before Mr. Edison was able to assure himself that
the process. could be practiced with sufficient accuracy and
refinement to be commercially valuable. The extent of the
work done is shown by Mr. Edison’s testimony on pages
270-71, also by Mr. Wurth’s testimony, pages 281 to 287,
ending with the answer to Q. 46, and by the stipulated dep¬
osition of John F. Randolph, book-keeper at the Edison
laboratory, showing that the experiments upon the process
finn f ^ en in su,t UP to March, 1898, when the applica-
tion for a patent was filed, amounted to more than $2*500.
f888 tSS: W Se"SC‘. tlle was the same in
•1 mti.ni ''af 1 when Mr. Edison made his application for
Edison io t t aVT’ h0Wevcr’ * was impossible for Mr.
Edison to say that the process could be executed in such a
manner as to be commercially valuable. He believed it
could be executed with the required degree of refinement,
and hence his persistent and costly experiments; but until
he had fully succeeded it was his duty to. refrain from apply¬
ing for a patent. It has often been made a reproach to a
patentee that he has rushed into the patent office with a
mere undeveloped scheme which he perhaps might never
bring to commercial success, and by obtaining generic
clainio foieatull other patentees, who independently con¬
ceived, developed and perfected the same invention. Mr.
Edison withheld his application until after he had perfected
the invention; but even so he was ahead of all competitors
in every step of the process. He was the first to conceive;
he was the first to disclose to others ; he was the first to
reduce to practice; he was the first to use commercially, and
he was the first to apply for a patent.
8. The court then says :
“In the meantime defendant had perfected his cellu¬
loid methods and processes and made a successful com¬
mercial product.”
THIS IS INCORRECT. There is no evidence whatever
that Lambert had perfected his celluloid methods and proc¬
esses and made a successful commercial product up to the
time of filing his application for a patent, which was on
August 14, 1899. The evidence , is plain that he did not
have the process completed, and had not made a successful
commercial product, up to October, 1897, because his oper¬
ations at that time, as described by himself and by his wit¬
ness Hamilton, were of a crude and impractical nature and
were performed upon thin sheets of celluloid cemented into
cylinders, while his specification for his patent says that thin
walled tubes of celluloid can not successfully be used (page
790, line 27, cl scq). The same thing is said by defend¬
ant’s expert, Mr. Carter, page 174. The filing of the ap¬
plication on August 14, 1899, was a constructive reduction
to practice, and there is not a syllable of testimony that
Lambert reduced his invention to practice before that date.
Lambert’s position, as compared with Edison’s, is clearly
set out in the opinion of the Board of Examiners-in-Chief,
which is printed in the record from page 12 to page 33.
After critically analyzing Edison’s showing and according
him a highly meritorious position with reference to the in¬
vention, the board on page 27 turns its attention to Lam¬
bert s showing, and the remainder of the opinion is devoted
to a critical analysis of it, as follows :
“Lambert alleges that he conceived of the invention in
May, 1892; disclosed it to others in the summer of 1893;
made a working model in the fail of 1893 by this process;
t lat lie embodied a full-sized apparatus and with it reduced
this invention to practice in September, 1897, at 6 7 and 69
^e strtd b Chicago, HI-; and that he has marketed about
-,00° record cylinders made by this process.
He hied Ins application on March 20, igoo.
nr-ic-hVn'lwf"05 (i" of Edison place his reduction to
And the fir fVlate conccption alleged by Lambert.
2*'1.0' ‘he application of Edison was two years
So % R •mgfi°f the nPP'ication of Lambert. '
to file his annlin ?• t0 Tn?eive' 10 re(lnce to practice and
to hie his application; and all that Lambert alleges is a later
sskt*- about foi,r
an^PPlication and first in
and adduction to nract^h'3 t'1" Edison’s conception
reduction to practice wJ* byt. ^'lmbert later than Edison’s
Umberfs pa^nf l„ted5nnn0thmg f?r Lanlbert N°r ‘Iocs
sssr b“ » «“» •' * *»•« >• Ed,™
i,rl,1 ;°rr?M «» lo
«H uert oy railure to file his application, for he filed first
lie kne fiH fU?° t0i mabe tbe cIaim' for l,e made it so soon as
Mori LombT S Patent coverinS the Caim.
Lan hllll. ,Cla"," 'Vas made only four months after
Lambert s .1 leged reduction to practice and before any use
of the invention to make it known to the public
Manifestly Lambert has no case on his nleadimrs
But Lambert’s case is not so strong ladings-
There is not enough m his own testimony, if taken to be
m ch lesf H 0r y estab,ish tl,at he ever bad any Process, '
nr or lo M C preSJnt process- for making stable records
on cross-examination97' * eVident fr0m his answcrs
. Also, it is evident that he never disclosed the process to
no tin"635 TayI°c (X'Q- 34), and Taylor’s evidence does
not show any disclosure of it to him.
r U? ,0c,tober> i897, according to his own testimony
Lambert lmd not explained this process to any one. He
tc-tifie, that in October, 1897, he disclosed it to his witness
Hamilton, and that between that time and the summer of
1099 he did not disclose it to any one. It was in the sum-
ciafiy°f l8" that hC met Mr' PllilPot- who aided him finan-
Now he says that Hamilton, in October, x8g7, saw him
mil1"6 °ut f|tl,ePro1cess with a !Mck HnS- That is his testi¬
mony as to the disclosure.
Hamilton testifies that he saw Lambert make a record in
“d *“
“Q. 8. Were these records thin, so that they would
collapse easily in the hand, or were they thick enough
to be self-sustaining? A. They were of varying
thicknesses; some of them were thin, and his aim
24
seemed to be to obtain material by which he could
make them thick enough not to collapse.
“Q g I now hand you a record marked Exhibit
Lambert’s 1897 Matrix’ (Record) and ask you if you
have ever seen anything like it ? A. Yes, sir; I can¬
not tell whether it is the identical record, but it looks
like one I saw Mr. Lambert make at 69 Lake street,
along some time in the fall of 1897.”
In answer to Question 10, p. 37, Hamilton states what
he saw Lambert do in October, 1897. The first part of the
statement is that he saw him make a matrix as this issue
requires that it should be made. Then he described backing
the matrix and then proceeds as follows with his story of
what be saw Lambert do:
“He then took a sheet of celluloid, or a strip, and
softened it by dipping it in hot water, brought the two
ends together and cemented them so as to form a ring
just a trifle smaller than the inside of his matrix. Then
lie dropped Ids ring into the matrix and filled up the
cylindrical space in the inside of the celluloid ring
with rubber or some similar material. I think that
was bis first trial. He then put them into a vise and
squeezed the rubber longitudinally, tile idea being to
have the rubber expand the celluloid cylinder up against
the matrix. Before that was done the celluloid was
heated in hot water and softened. After it had been in
the vise, as he thought, long enough to set it up — per¬
haps three, five or ten minutes— the vise was loosened
and the rubber, celluloid and all put into cold water,
when it could be pulled out by hand.”
On cross examination Hamilton testified :
“X-Q. 1. You say, Mr. Hamilton, in describing
the process which Mr. Lambert carried out in your
presence in the fall of 1897, that lie took a sheet or strip
of celluloid and made a ring out of it; what was the
thickness of this sheet? A. I do not know what the
thickness was— they were thin; about like a sheet of
paper; perhaps a little heavier.
“X-Q. 2. After, the impression was made on this
ring of sheet celluloid, was the celluloid mounted on
a backing? A. Yes, sir.”
“Re-d. Q. 1. Do you mean by your last two answers
to state that the celluloid ring which you saw formed,
or was explained to you by this process, was so thin
that it would not stand up? A. It is really impossi¬
ble for me to tell you as to whether he formed the
impression on the thin ring and then backed it on or
backed it up first.
“Re-d. Q; 2. The records you saw produced, how¬
ever, were self-sustainable, were they not? A. Yes,
Now there is nothing proven by this testimony more than
is stated by Lambert that he did in the summer and fall of
1893. Sec his answer to Question 21. It is the same old
rubber-plug and. vise apparatus operated on a celluloid ce-
mented-edge ring of the thickness of paper.
His own description of the 1897 procedure (answer to
Question 24) and of subsequent discoveries and improve¬
ments (answer to Questions 24 and 29) disclose three means
for expansion, (1) a rubber plug. (2) a printer’s-roll com¬
position and gelatine', and (3) a sectional expanding man¬
drel. And these answers disclose that there was difficulty
in maintaining the joints of his rings made of sheets and
in the softening of the blanks, and in determining the time
which should elapse between the covering of the ring with
the solvent and the forcing of it into the matrix. Now the
rubber-plug device was his first device. It was not until
afterwards that he discovered the cement for making proper
joints and the proper interim between coating with the
solvent and pressing. And when we conic to his application
we find all of these means for compression .thrown away
and hot air and steam used in their stead, and we find noth¬
ing of cylinders made of sheets cemented at their edges or-
of these sheets first made and then backed by thick rings.
And there is no testimony that any of the records made
by him in 1897 were successful in use. And not one of
them is produced.
He decries in his patent the making of records from thin
plates and gives the reason why they will not produce true'
records, and yet he has no evidence certainly establishing
that he had in 1897 worked this process in such a manner
as to produce a thick record of commercial thickness by pres¬
sure within the matrix. There is nothing more proven in
. .97 tha“ tllc old thin-paper thickness ring with cemented
joints which he had been making since the fall of 189a,
made by the fira devised crude extemporized apparatus.
We cannot regard a process which has not been executed
o make the product which his patent calls for, as reduced
to practice. 1 r „
He had conceived of a process the same in general steps
Bufhe hnh|1ChM?Uld f°rm-ringS t0° tl,in for llse as recortfs,
nroefs, ’ nV’ffl, " C,°nCC,Ved 0f, t.l,c Ganges by which that
whichtis peT t°f, s'”e,° length 'and ''thickness
T£
api'h'c-'tio . -« fit„ .crc- !'Vl °“ tl,e market until after his
ills October ;I,ei ,.Wh;ch w“ more ‘han two years after
His own conrhi??’feXPeri|mellt t,le llrcscnce of Hamilton.
dH » '*«■ “•
According to the evidence he was a’ poor man in 1807
°" l,C had sa,ar7 aTC” wife and
hired a shop" withTl'ip^ '•"•f a*)0ljt $3° a month, and had
lie could and when he rould^ °f Paying for 'ts rent w,lat
and had'1achievedCh!s0pwr»s'e 'eff ]la<! Per^ecta(I ‘his process
luloid record If i,P 1,7,1 u* of maklnS an infrangible cel-
a relief Lorn his imnov’ IZ'™' j!nd he knew was,
to 1900 he neither explained n' condlt,on- Yet from 1897
net to any one ' 2 " 'S? ‘h“ or showed its prod-
tvas not heeded. What was n^i"? confidcnce in him. It
invention. That would have W,as, confidence in his
|t’ hy showing the new infranS o'1”' the .«i°ney to back
>"? as good sound as tl c fnS comnierc'ai records giv-
the process perfected for nffirt! "Records. He had
mentary records. It cost almn , em', .He had made frag-
cost almost nothing to make a few
27
records and show them. I-Ie not only never made one com¬
plete, which is a fact significant that he knew that there was
no use in trying to make one complete until he could
make a fragment complete and practical in use — but he has
not kept a single one of his incomplete productions of i8g7
or any record formed anterior to the filing of his application.
he conclusion is inevitable that his exhibition to Hamil¬
ton m 1897 was one of an unsuccessful experiment, and
that it was not long after that when. he had obtained an
apparatus fit to make records of commercial length and
thickness carrying records which reproduced the sound as
excellently as the original record, or had conceived of and
practiced the details of the process necessary to be followed
in working the proper appatatus.
A process is not perfected until it is wrought to effect its
result; nor, when its result is a product, until it has pro¬
duced the perfected product fit for industrial use.
That affair of 1897 was not a reduction to. practice of the
process of this issue. It can only with difficulty be accepted
as a disclosure of a conception of the issue.
If so accepted, Lambert has a conception only prior to
Edjson’s application.
It is urged on behalf of Lambert that Edison’s applica¬
tion does not disclose the process of the issue and that con¬
sequently there is no interference in fact between the two
applications or between the application and the patent as the
case may he.
The contention specifically is as to fact, that the softening
of the wax cylinder is not disclosed in the Edison applica¬
tion. •
This matter' is within our jurisdiction only for consider¬
ation whether we shall act under Rule 126.
The question is one of fact, dependent on the action of
a wax ring of considerable diameter and thickness under
the influence of heat to change its size to a very small ex¬
tent, and to enable it to receive impression's in depth so
small as one one-thousandth of an inch. •
In such a case and in the presence of the testimony of
experts in handling wax- records, we decline to express any
_ z . . m*
opinion as to this question of fact or as to the question of
an interference in fact.
Especially do we decline for the reason that two tribunals
of this office have held that there is an interference in fact
and have so held on the face of the applications.
The decision of the Examiner of Interferences awarding
priority to Edison is affirmed.”
Even after Lambert had accomplished everything in his
power, his process, according to Philpot, was unsuccessful
commercially. Philpot says, in answer to Q. 6, p. 135, that
the defendant company abandoned the original Lambert pat¬
ent because it was found not commercially valuable, owing
to faults which were overcome by the Messer improvement.
On page 136 he says :
It seemed for a time as if we would have to aban¬
don the making of celluloid records altogether. The
Lambert processes were not complete; the final step
was lacking. There seemed, so far as we knew, no
way in which a commercially perfect celluloid phono¬
graph record could be produced.”
In this connection it is to he home in mind that the de-
endant company was not organized until about May 1,
1902 (Lambert, p. 99.)
With the foregoing before the lower court it seems in*
ccmiprehens.b'e that the court in its opinion should have
made the assertion last quoted.
9- The court then says:
the' nSTv’n' 301,1 Ju'y >902, claimed to' use
(XO iool 1 .at which time Edison says
' ;y' ,09'’ mechanical duplicates were abandoned.”
sin«1i8Q7C°7ho1t,;in/aCt the ComPIainant had been using it
97. hough from what immediately follows in the
opinion, it is evident that the court wholly misapprehended
the meaning of “mechanical duplicates.”
10. The court then says :
"rt 1S ,t0 .^strain defendant from manufacturing
■these mechanical duplicates that complainant seeeks to
invoke the power of the court in support of its alleged
rights under the caveat.” s
is appears in this case
THIS IS INCORRECT. So far as
the defendant is not making, and has never made, “mechan¬
ical duplicates.” Moreover, the complainant is asserting
no rights, and it has no rights to assert, under the CA¬
VEAT. The complainant is asserting its rights under the
patent in suit.
n. The court then says :
“No reason is disclosed why ten years should have
followed the filing of the caveat.”
THIS IS INCORRECT. There is abundant testimony
in the record that experiments were continued at heavy ex¬
pense in Mr. Edison’s laboratory (not factory), during
the whole of that ten years.
12. The court then says :
“In an age when science is making, rapid progress
one may not lie still and see advances made even along
lines suggested by him and then after years of forward
movement assert his prior claim to the broad inven¬
tion.”
There is nothing in the record which calls forth the fore-
, going proposition. It . is founded upon the erroneous asser¬
tions of fact noted above.
THIS IS INCORRECT. They did specifically what
they had a right to do under the law, as expressed in de¬
cisions of the United States Supreme Court.
In Bates v. Coc, 8 Otto, p. 31, the Supreme Court says :
“Inventors may, if they can, keep their inventions
secret; and if they do for any length of time, they do
not forfeit their right to apply for a patent unless an¬
other in the meantime has made the invention, and se¬
cured by patent the exclusive right to make, use and
vend the patented improvement. Within that rule and
subject to that condition, inventors may delay to apply
for a patent; but the Patent Act provides, as before
stated, that the defending party in a suit for infringe¬
ment may plead the general issue, and, having given
the required notice, may prove in defense that the pat¬
ented invention had been in public use or on sale for
more than two years before the alleged inventor filed
? patcnt> and tlle provision in that
, at lf ‘I1® ,ssyc l)e found for the party setting
his favor1” e'1Se’ ‘ Judgment or tlecree shall lie in
In Agawam Woolen Co. v. Jordan, 7 Wall., 583, the
Supreme Court says; ’ 5 3'
ti0?“ly-,an inver>t°r may abandon his inven-
merefoA^ „emler or,(lcdica‘c ^ ‘o the public; but
ress of exnerimo 1° appV or-a Patcilt tll'ring the prog-
his inventmn i S; a.n1 Vntl1 tl,e Party has perfected
affords no lust 1 6S C|d \ts valuc actual practice,
Citing KcnmveWindLr°l uy Suc111 Pr“umption.”
nockl Dialogtie, fp^i. ^ 322’ and Pc"'
t0 defe'ldant
THERE IS NO FOUNDATION FOR THF STATur
MENT THAT THE DEFENDANT AND OTHERS
--L0Pf THR ART- The showing is that Edison
was far in advance of all others, not only in completing the
invention, but in applying for a patent for it.
The foregoing opinion is in all about the length of one
page of the printed record.' It is founded upon a record
of upwards of eight hundred pages. The fact that in this
short opinion seven out of fourteen of its propositions, and
these of the most vital character, were erroneous led com¬
plainant's counsel to think that upon a review of the case
the lower court might reverse its finding. Accordingly a
petition for a rehearing was filed, in which the errors were
plainly pointed out (Appellant’s Brief, Appendix I-VI),
but as stated above, the petition was denied (Appellant’s
Brief, Appendix VII-VIII).
In the supplemental opinion, after saying that the motion
was based upon the assumption that the court did not give
due weight to the facts tending to show that the delay re¬
ferred to in the former opinion was due to the fact that
complainant was constantly experimenting with a view of
creating a perfect commercial article, the court proceeds
to set out the steps defined in Mr. Edison’s caveat, filed Oc¬
tober 36, 1888, and adds:
1. "Whatever experimenting was carried on by
complainant during the twelve years between the date
of the caveat and that of the patent in suit, did not
involve a modification of the said two steps of the
process." ■
The period between the filing of the caveat and the grant¬
ing of the Edison patent was nearly fourteen years instead
of twelve years, due largely to the fact that the application
was involved in a series of vexatious interferences, one of
which was with Lambert. The period which elapsed be¬
tween the filing of the caveat and the filing of the Edison
application for a [latent was about nine years and four
months, and the period which elapsed between the filing of
the caveat and the earliest use of the invention for commer¬
cial purposes in making “mechanical duplicates” was ap¬
proximately nine years. Properly qualified in the matter of
time, the above statement of' the court is substantially cor¬
rect — in a broad sense.
But the Supreme Court in the case of Elisabeth v. Pave¬
ment Company, 7 Otto, 126, is very clear upon the point
that the experiments made may or may not result in a
change of the original process. It is sufficient that the in¬
ventor was endeavoring to bring the invention to perfection,
in that case the court said:
He may see cause to alter or improve it or not.
His experiments will reveal the fact whether any and
wliat alterations may be necessary * * * and
though, during all that period, he may not find that
any changes are necessary, yet lie may be justly said
e using his machine only by way of experiment:
and no one would say that such a use. pursued with a
wn dri 1 " eln?f tcsti,,e the qualities of the machine,
would be a publicise within the meaning of the stat-
long as lie docs not voluntarily allow others
to make it and use it, and so long as it is not on sale
coniform f6’ he ,k.ecps the invention under liis own
control and does not lose his title to a patent.” •
2. The court next says :
theTrnr?slS S°me “nf?sion »’ the record as to whether
the process was not substantially abandoned."
33
TPIIS IS INCORRECT. The showing is to the exact
contrary. This error on the port of the court below prob¬
ably arose from the cross examination of complainant’s wit¬
ness, Mr. Prank L. Dyer, on pages 386-7. Since about July
1, 1902, the complainant has been making its duplicate rec¬
ords under the Miller and Aylesworth patent (Dyer, pp.
385-6). This process is described by Mr. Dyer in answer
to X.Q. 105, page 385. It is a casting process, and is in¬
cluded within certain claims of the patent in suit, but is not
included within the more specific claims. From the year
1897 until about July 1, 1902, the complainant was using
the process covered by the specific claims charged to be in-
fringed by the defendant herein, though it was not putting
the duplicates themselves' upon the market, but was using
them as masters from which to make mechanical duplicates.
T11 X.Q 109, page 386, defendant’s counsel asked Mr. Dyer
as follows:
“When did you abandon the specific process set forth
in die patent in suit for the process which is now car-
The witness says nothing about any abandonment of the
process of the patent in suit, specific or general, but says
that the specific process was carried on commercially up to
the time of the abandonment of mechanical duplicates.
As we have said the casting process, now used by the
complainant, is within the broad claims of the patent in
suit, but even if it were not, and even if the complainant
had wholly ceased to operate under the patent in suit, this
fact would not give the defendant a right to use the patented
process. I11 the case of Hoc v. Knap, 27 Fed., 204, decided
by Judge Blodgett, there is an expression to the effect that
a patentee must either use his invention himself or permit
others to use it; but that view has been held to be unsound "
by every court since, which has had occasion to consider the
same question.
Jn Consolidated Roller Mills Co. v. Commbs, 39 Fed., 803,
Judge Brown (now Mr. Justice Brown), referring to Judge
Blodgett’s decision, said :
“I find myself unable to concur in this view. A
man has a right to deal as he chooses with his own. I
know of no reason why a patentee is bound to make
use of his own inventions, or to license others to use
them, any more than the owner of a manufacturing
establishment is bound ‘to run it for the benefit of his
neighbors or employes. As observed in the earlier por¬
tion of this opinion, the question of licensing another
HUrlw rem,°n is one wl,ich tl,e Patentee alone has
me right to answer; and courts cannot lawfully com-
■ pel him to make uscf of his invention, or to permit oth¬
ers to use it against his will.”
in Campbell Pricing Press &■ Mfg. Co. v. Manhattan
' ' ,49. ,'ct ’. Rep-’ 935. Judge Lacombe commented
upon the decision in Hoe v. Knap, as follows :
an hi1iuncHn!°tlgeft’ how?vcr- at final hearing, refused
c l'f'nSt a" ",frin6er> holding that, ‘under
bound .l g‘Ve,S a I,atentee a monopoly, he is
one it on ‘° USC ’C patent himself, or allow others
pros: s°ra,t for this
^2: the “• which7M, t
tomakt usfamKhlfant °J *he 'e*c,usive ^
gument K 1 s mventr°n, supported by ar-
fo decision^ 0 weieht is alwa^ be given
mg authority when thc'L™ th?y a-e not control1-
another circuit I ,i0 , - question is presented in
.by this decision to refuse’tl eT 0'?’-^1 c.onstraine<l
tion, because it asks >t1e c°mplamant its injunc-
carcs to pay ” S more for a 'i«nse than defendant
In Heaton Peninsular Button-Fastener Co. v. Eureka.
Specially Co., 77 Fed. Rep., 294, Judge Lurton, speaking
for the United States Circuit Court of Appeals for the Sixth
Circuit, defines the rights of a patentee as follows:
“If he see fit he may reserve to himself the exclu¬
sive use of his invention or discovery. If he will
neither use his device, nor permit others to use it, he
has but suppressed his own. That the grant is made
upon the reasonable expectation that he will either put
his invention to practical use, or permit others to avail
themselves of it upon reasonable terms, is doubtless
true. 1 his expectation is based alone upon the suppo¬
sition that the patentee’s interests will induce him to
use, or let others use, his invention. The public has
retained no other security to enforce such expectations.
A suppression can endure but for the life of the patent,
and the disclosure he has made will enable all to enjoy
the fruit of his genius. His title is exclusive, and so
clearly within the constitutional provisions in respect
of private property that he is neither bound to use his
discovery himself, nor permit others to use it. The.
dictum found in Hoc v. Knap, 27 Fed., 204, is not sup¬
ported by reason or authority.”
The above language of Judge Lurton is quoted with ap¬
proval by the Supreme Court in Bcinent Sr Sons v. National
Harrow Co., 18.6 U. S., page 70.
3. The court next says :
“It would seem that the efforts made during that
period were directed mainly to securing a commercial
article and pertained to details which involved matters
of material, finish and the like.”
This is substantially correct as far as it goes, and of it¬
self it is totally inconsistent with any theory of abandon¬
ment. The efforts, however, extended beyond were ma-
terial and finish. To make a commercial article loudness '
and clearness had to be obtained and “scratchiness" of sound
“It is difficult to arrive at a motive for a twelve-
years’ delay in securing a patent in pursuance of the
caveat, unless complainant thought the rights sought
to be protected were of no appreciable value and not
liable to be apnropriated."
No doubt upon reconsideration the court would substi¬
tute for tbe words “twelve-years’ delay in securing a pat¬
ent, tbe words “nine years and four months in applying
for a patent.” It might easily be difficult for one not fa¬
miliar with the difficulties and perplexities of this particu¬
lar art to understand why the experiments should have nec¬
essarily continued over such a long period before the in¬
ventor was oatiofied with the results, but the evidence is
that that length of time was thus consumed, and at an
expense of upwards of twenty-nine thousand ($29,000) dol¬
lars; and ,t would be difficult to conceive of a more complete
refutation of any theory of abandonment than is to be
found in this fact.
5- The court next says :
mti.ni '!i,a noteworthy fact that nothing was done to
n the mnn,!fTCtCSS T'1 <lefent,ant employed celluloid
mthe manufacture of records and made them success-
„ ™f ‘S 'ST—' lmmt “ • *««• wM.
mine mn, mmKk, p„w ^ J,— ■
marketing the duplicate records themselves, but using them
as secondary master records for making “mechanical dupli¬
cates, which latter were marketed). At this time, as will
be pointed out further on, Lambert had not produced a suc¬
cessful celluloid record, and at that time tbe defendant had
not come into existence.
* 6. The court next says :
So far as disclosed in the evidence, every principle
claimed by complainant to have been infringed by de¬
fendant, and which defendant uses, was fully disclosed
m the caveat.”
This is correct in a broad sense. In tbe same broad sense
it is correct as to the abortive and worthless results obtained
by Lambert in the fall of 1897, which constituted the cul¬
mination of his achievements in any possible race which
might have existed between himself and Edison; and there
is no showing whatever that he progressed any farther than
this until more than a year after Edison’s application was
filed. The earliest showing of a successful and commercial
application of the process by Lambert is his application for
a patent filed August 14, 1899; and the showing of the tes¬
timony is that this was so deficient in practical results as to
prove a failure.
7. The court next says:
“It is also logically deducible from the evidence that
not only the matters covered by the caveat were made
public, but the complainant made free use of said prin¬
ciple and some of the results of experiments in perfect¬
ing the record before his numerous employes, and made
no effort to maintain secrecy in regard thereto.”
THIS IS INCORRECT. There is no showing what¬
ever. from which such a deduction can logically be made.
There is nothing in the record to indicate that Mr. Edison’s
numerous employes, or any of them, knew anything of the
process until it was first used for making secondary master
records from a primary master record, which was a little
ealier than the application for the patent in suit, and there
is no definite showing that any of the ordinary employes
knew it then. Of course the two Wurths understood it,
and so did Dr. Schulzc-Bcrgc, in his lifetime, because they
were employed by Mr. Edison to perform the extended and
constant laboratory experiments which were made. It may
be true that there is no showing that these experimentors
were pledged to secrecy, but the very nature of their em¬
ployment implies a confidential relation and carries with it
an inherent pledge of secrecy, as solemn as any which exists
between an attorney and his client.
In Lyman v. Maypole, 19 Fed., page 735, Judge Blodgett
said :
‘I lie law permits an inventor to construct a machine
which he is engaged in studying upon and developing,
and place it in friendly hands for the purpose of testing
it, and ascertaining whether it will perform the func¬
tions claimed for it; and if these machines are strictly
experiments, made solely with a view to perfect the
device, the right of the inventor remains unimpaired :
out when an inventor puts his incomplete or experi¬
mental device upon the market and sells it, as a manu-
m°re tha” two years before he applies for his
nr ci ’ leFl.vcs lo t'1c Public the device in the condition
or stage of development in which he sells it.”
See also Huntington v. Mill Co., 109 Fed., 269.
is dieT’T’ f* ?C.°f m"abc,h v’ ?”*«*«* Co., supra,
O. 1 lie court next says :
‘llie record plainly discloses that the patented mat-
pa?enruLnrpplicdbfor.”,0rC tW° ^ bef°re thc
THIS IS INCORRECT. Ihere is no showing what¬
ever that the “patented matters” were known to anybody
aside from Mr. Edison, his necessary confidential laboratory
assistants and perhaps his patent solicitor, more than two
years, or at any time before the application for the patent.
9- The court next says, and this as if it has some rela¬
tion to what has just preceded :
“The caveat remained in force only one year.”
It is correct to say that the caveat remained in force only
one year, but it is not apparent what pertinency this fact
had in the mind of the court. Possibly the court supposed
that upon the expiration of a caveat the disclosures con¬
tained in it became open to the public. If so, the court was
wholly wrong. A caveat never becomes accessible to the
public, unless by the action of the caveator, or his assigns.
A caveat is filed in the secret archives of the Patent Office.
Many attorneys regard it as a wholly useless provision of
the law. Its purpose is to give the caveator an opportunity
to perfect his invention before applying for a patent, and at
the same time afford him an opportunity to engage in an
interference with any other person who may file an appli¬
cation for the same thing while his caveat is in force. In
such an event, he is notified and given ninety days in which
to file his application, for the purpose of the interference.
The caveat is in no sense a patent, and confers no rights
except the mere right of notice as defined alrave. It remains
in force one year, and may be renewed from year to year
for an indefinite period. After the caveat has expired by
limitation, whether at the end of one year, or two years,
or more, it remains where it always has been, in the secret
archives of the Patent Office. The nature and effect of a
caveat are fully explained m Volume 2. of Robinson on
Patents, forming the subject of Section II, pages 20 to 26
inclusive. On page 23, under the sub-head “Duration of
* Caveat” the author says :
“A caveat, once filed, remains in force for one year
from the date of its acceptance by the Patent Office.
At the expiration of this term it may be renewed for
another year by the payment of an additional fee; and
so on from year to year at the pleasure of the caveator.
If not renewed, it still remains in the secret archives
of the Office, although it ceases to secure any rights to
the inventor.”
10. In conclusion the court says :
“It is unnecessary to pass upon the question of laches.
Complainant distinctly gave to the public his basic in¬
vention and cannot he heard now to complain that de¬
fendant made use of it."
THIS IS INCORRECT under the law, in the light of
the facts presented in the record.
It undoubtedly follows from the complete misconception
. of the evidence on the part of the court below which we
have noted above.- As a matter of fact, there is not the
slightest proof that the invention was in public use or 011
sae more than two years before Edison’s application for a
patent, as has clearly been shown. Evidently the court had
rineniv' T * le complainant had been practicing the process
2?" iPUtt,ng tl,e duplicate ««">» upon market
more than, two years before the application for a patent.
invents if0?’ m *l,s oat’’ to 1,is application, said that the
■nvention had not been in public use or on sale for more
than two years prior to the application. His testimony and
that of Mr. Wurth, pertaining to the commercial use, is
entirely consistent with that oath. Their statements should,
therefore, be so interpreted as to harmonize with the oath,
and not be subjected to a forced and unnecessary interpre¬
tation which will make them contradict the oath.
The defense seeks to deduce public use on the part of
Edison from his preliminary statement m the interference
(p. 419), wherein he says he conceived, disclosed to others
and reduced to actual practice and made drawings of an
apparatus intended for the carrying out of the method or
process defined ,by the issue of said interference, in the
month of October, 1888, and that since that time he has
continuously practiced the said method or process at his
laboratory at Orange. New Jersey, and has made, a great
number of duplicate records from said process. A prelim¬
inary statement is a mere pleading. It is not evidence of
any fact in an interference. It is only a general statement,
serving as a limitation upon the testimony. This prelim¬
inary statement is supported by the caveat, together with
the testimony of Mr. Edison and Mr. Wurth. A process
may of course be “practiced” either experimentally or com¬
mercially. Comparing the preliminary statement with the
testimony referred to it will be seen that they are perfectly
consistent with each other. Lambert coultl have raised the
issue of public use against Edison in the Patent Office, or
it could have been raised by the office sua sponie, but noth¬
ing of the sort was done. In this case the preliminary state¬
ment and the showing which it forestalled should be under¬
stood as they were obviously intended, and as they were
understood by the Patent Office.
Oct. 21,1905.
P.C. Dyrenforth, 'Esq.,
Monadnock Bldg.,
Chicago, Ill.
Dear Sir:-
IiAMBKRT SUIT: Your favor of the 18th inst.
has been forwarded to me for reply, Ufcon carefully consider¬
ing the situation as presented by Judge Seaman|s opinion, \
it seems to me that after all on the question of public use,
as disclosed by the record, the Circuit Court of Appeals
wei|probably right. The case, therefore, seemed practically
hopeless, entirely aside from the intimation in the opinion
that there was no infringement. I therefore talked the case
over with Mr. Edison and he agrees with me that under the cir^
cumstanoes, we should do nothing further with the case. As
a matter of fact, the Lambert Company has been practically put
out of business, so that on* of our objects has been effected.
Yours very truly,
eld/akc.
Legal Department Records
Phonograph - Case Files
National Phonograph Company v. Lambert Company and Thomas B.
Lambert (Edison Patent 414,761)
Edison Phonograph Company v. Lambert Company and Thomas B.
Lambert ( Edison Patents 382,418 and 382,462)
This folder contains material pertaining to two suits brought by the
National Phonograph Co. and the Edison Phonograph Co. against the Lambert
Co. and Thomas B. Lambert in the U.S. Circuit Court for the Northern District
of Illinois, Northern Division. The cases were both initiated in December 1900
and involved Edison's U.S. Patents 414,761, 382,418, and 382,462 on
phonograph record blanks. Together, these cases were also known as the
"tapered bore case." The selected items consist of the following portions of the
complainant's printed record: index, bills of complaint, and testimony of Edison.
LecjoJ Box lirf
INDEX.
Frank L. Dyer :
Direct _ _
Cross _
Frank L. Dyer (rebuttal) :
Direct . . . . .
Thomas A. Edison :
Direct... .
Complainants’ Exhibit Patent
No. 382,418 .
Complainants’ Exhibit Patent
No. 382, 4«2 . . .
Complainants’ Exhibit Patent
No. 414,701 .
Complainants’ Exhibit Def<
Record _ _ _
Complainants’ Exhibit Edison
and Carton _
Complainants’ Exhibit Tainter
No. 380,535 . T _
Oomplainauts’ Exhibit Edison
No. 382.419 _
ent No. 397,851) . . . 79 117-120
Complainants’ Exhibit Herrington Pat¬
ent No. 399,264 _ . 79 121-124
Complainants’ Exhibit Herrington Pat¬
ent No. 399,266 . 79 126-128
Complainunts’ Exhibit Herrington Pat¬
ent No. 464,476 . 79 129-134
Complainants’ Exhibit Edison Patent
No. 488,191 . . . 79 136-138
' Miscellaneous.
Notices of taking testimony. . . 14-17,80,81
Stipulations _ _ 18,32
To the Honorable the Judges of the United States
Circuit Court for the Northern District of
Illinois, Northern Division.
National Phonograph Company, a corporation or¬
ganized and existing under and by virtue of the laws
of the Stato of New Jersey and having its principal 2
place of business at Orange, in the County of Essex
and State of New Jersey, brings this, its bill of com¬
plaint, against Lambert Company, n corporation or¬
ganized and existing under and by virtue of the laws
of the State of Illinois and having its principal place
of business in the City of Chicago in said State, and
Thomas B. Lambert, a resident of and having a reg¬
ular and established place of business in the said City
of Chicago, in the State of Illinois, individually, and as
an official of the said Lambert Company. 3
And thereupon your orator complains and says :
I. That heretofore and before the 12tli day of No¬
vember, 1889, Thomas A. Edison, being theu, as now,
a resident of Llewellyn Park in the County of Essex
and State of New Jersey, and a citizen of said State,
was the original, first and Bole inventor of certain new
and uBef ul improvements in phonogram blanks, fully
described in the letters patent hereinafter mentioned,
and which had not been known or used by others in 4
this country, and wliioh had not been abandoned nor
patented or dusoribed iu any printed publication in
this or any foreign country, before hiB invention
thereof, and which were not, prior to his application
for letters patent therefor, as hereinafter mentioned, in
publio use or on sale in this country for more than two
: II. Tliat' the said Edison, being so as aforesaid the
first inventor and discoverer of the said improvements.
to continue tlie same and their other aforesaid unlawful
aots, in disregard and defiance of the rights of your
orator, have the effect to and do eucourage and induce
16 others to venture to infringe said letters patent.
VIII. Tour orator therefore prays that the said de¬
fendants Lambert Company and Thomas B. Lambert
individually and as an official of the said Lambert
Company, and their officers, servants, agents, attorneys,
employees, worltraei a 1 onfo lo ate md each and
every of them, may be perpetually restrained and en-
joined by .the order and injunction of this Honorable
Court from direotly or indireotly making, constructing
using, vending, delivering, working or puttiiig into
oy tUem acquired and the damage:
3 rat or from the aforesaid unlawful
Court may assess said profits and
iuorease the damages to a sum i
stated to be alleged on information and belief, and 'as
sxr.fi ravt&yrv
Subscribed and sworn to be- ) * Gl“°"E-
fore me this 29th day of (
December, 1900. )
D. Randolph,
Notary Public for New Jersey.
[Seal.]
Bill of Complaint.
To THE HONOHADLE THE JUDGES OP THE UNITED STATES
Circuit Court for the Northern District of
Illinois, Northern Division :
Edison Phonograph Company, a corporation orgau-
ized and existing under and by virtue of the laws of
the State of Now Jersey and having its principal place
o business at Orange, in the County of Essex and
State of New Jersey, brings this its bill of complaint
against Lambert Company, a corporation organized
and existing under mid by virtue of the laws of the
State of Illinois and having its principal place of busi¬
ness m the City of Cliicugo in said State, and Thomas
B. Lambert, a resident of and having a regular and es-
tablished place of business in the said City of Chicago
in the State of Illinois, individually and as an official
of the said Lambert Company,
And thereupon your orator complains aud says :
noLT'1,atheret0f0r0n,,dl,ef0re tlle 8tl> day of May
1®88' Thomas A. Edison, being then, as now, a resident
of Llewellyn Park in the County of Essex and State of
Now Jersey, and a citizen of said State, was the orig¬
inal, first and Bole inventor of certain new and useful
improvements in pliouogram-blauks, fully described in’
the letters patent hereinafter mentioned, and which
had not been known or used by others in this country
and which had not been abandoned nor patented or de¬
scribed in any printed publication in this or any foreign
country, before his invention thereof, and which were
not, prior to hie application for letters patent therefor
as hereinafter mentioned, in publio use or on sale in
this oountry for more than two years.
U. That the said Edison, being so as aforesaid the
first inventor and discoverer of the said im¬
provements, made application in writing to the
Commissioner of Patents of the United States
for the grant of letters patent therefor, and
Bill of Complaint.
29 - - - : -
paid into the Treasury of the United States tho
fees required by law, and then and there fully and
in all respects complied with all the uecossary con¬
ditions and requirements of the statutes of the United
States in such case made and provided, and thereupon,
after due examination having been made by the Com¬
missioner of Patents ns to the novelty and utility of the
said invention, as provided by law, the Commissioner
of Patents caused to be issued to the said Edison let-
80 ters patent in due form of law, under the seal of the
Patent Office of the United States, signed by the Sec¬
retary of the Interior and countersigned by the Com¬
missioner of Patents and bearing date the said 8tli day
of May, 1888, and numbered 382,418, and that the said
letters patent did grant unto tho said Edison and unto
his heirs and assigns, for the term of seventeen years
from the date thereof, the exclusive right to muke, UBe
and vend tlie said invention throughout tho United
States and the territories thereof, as by said letters
31 patent or a duly authenticated copy thereof in Court
to be produced will more fully and at large appear.
III. That heretofore and before the said 8th day of
May, 1888, the said Thomas A. Edison, being then, as
now, a resident of Llewellyn Park, in the County of
Essex and State of New Jersey, and a citizen of said
State, was the original, first and sole inventor of cer¬
tain other new and useful improvements in phonogram
■ Wanks, fully described iu the letters patent hereinafter
32 mentioned, and whioh had not been known or used
by. others in this country, and whioh had not been
abandoned nor patented or described in any printed
publication in this or any foreign country, before his
invention thereof, and whioh were not, prior to his ap¬
plication for letters patent therefor ns hereinafter
mentioned, in publio use or on sale in this country for
more than two years.
„ I7; Catlike said Edison, being so as aforesaid the
first inventor and discoverer of the said' improvements.
VI. That the inventions described and chimed
said several letters patent are capable of conjoint i
in one and the same apparatus, and that in the api
Bill of Complaint.
VII. That your orator is engaged in the manufacture
aud sale of phonographs and supplies therefor, and
that in carrying on its business it has manufactured,
and is manufacturing in- largo quantities, phonogram
blanks employing aud containing tbo several inven¬
tions dcsnribed and claimed iu and by said several let¬
ters patout ; that it has invested and expended largo
sums of money, and has been to great trouble in and
about the said several inventions for the purpose of in¬
troducing the same and making the same profitable to
itself and to the public ; that phonogram blanks em¬
ploying and containing the several inventions patented
as aforesaid have been in greut damaud, aud are of
great benefit and advantage to your orator and to the
public, and that the public has generally acknowledged
and acquiesced in the rights of your orator, and your
orator behoves that it will realize and receive large
gains aud profits therefrom if infringement by the said
defendants and their confederates shall be prevented.
VIII. Your orator avers, on information aud belief,
that phonogram blanks heretofore and now being
placed upon the market by your orator and its
predecessors iu the title to said several lottors
putent, and made under and iu accordance with the
said several letters patent have been duly marked with
the word “Patented,” together with ' the respective
dates of said letters patent as aforesaid ; and farther
your orator avers on information and belief, that the
defendants were duly notified of the said several letters
patent nnd of the infringement hereinafter charged, but
that they continued after such notice to make and use
phonogram blanks embodying the said several iuven-
IX ThaVthe defendants, well knowing the premises
and the rights secured to your orator ns aforesaid, but
contriving to injure it and to deprive it of the benefits
and advantages which might aud otherwise would no-
orue unto it from the said several inventions; did; after
gram blanks employing and containing the said several
inventions set forth in said sovoral letters patent by the
said defendants, and their preparation for and avowed
determination to continue the same and their other
aforesaid unlawful aots, in. disregard and defiance of
the rights of your orator, have tho effect to and. do en¬
courage. and induce .others to venture to infringe the
said several letters patent, .
XI. Your orator therefore prays that the said de¬
fendants, Lambert Company and Thomas B. Lambert,
Bill of Complaint.
individually and ns an official of the said Lambert
Company, and their officers, servants, agents, attorneys,
employees, workmen and confederates, and oneli
and evoiy one of them, may bo perpetually re¬
strained and enjoined by the order and injunction of
this Honorable Court from directly or indirectly mak¬
ing, constructing, using, vondiug, delivering, working
or putting into operation or uso, or in any wiso coun¬
terfeiting or imitating, the said sevoral inventions, or
any phonogram blanks made or operated in accordance
therewith or like or similar to thoso which the said de¬
fendants linvo heretofore made, sold, constructed,
operated or used, and that the said defendants may
be deoreed to pay the costs of this suit, and that your
orator may have such other and further reliof as to this
Honorable Court shall seem meet and as shall bo agree¬
able to equity.
XIL Your orator further prays that an injunction
pendente fete bo granted, issuing out of and under the
seal of this Honorable Court, onjoiuiug and restraining
the said defendants and their officers, servants, agents
attorneys, employees, workmen and confederates, and
enek and every of them, to the same purport and tenor
and effect as hereinbefore prayed for with regard to
said perpetual injunction.
XIII. And for as much as your orator can have no
adequate rehef save in this Court, to end therefore
that the said defendants may, if they can, show why
your orator should not have the relief, hereby prayed
and may, but not upon oath, an answer under oath
being hereby expressly waived, accordihg to their best
and utmost knowledge, remembrance, information and
rem!mhUd and utmost knowledge,
ot the s^'mi fnn^°r “TDd b°li0f’ of «»' officers
of. the said defendant Lambert Company full
true, direct and perfect answer muta te' S’
piemises and to all the several matters herein
before stated and charged, as fully aud particularly
Bill of Complaint.
as if severally and separately interrogated as to
eaoh and every of said matters, and may be compelled
to account for and pay to your orator the profits by
them acquired and the dnmnges suffered by your
orator from the aforesaid unlawful acts, and that the
Court may assess said profits and damages and may
increase the damages to a sum not exceeding three
times the amount thereof.
May it please your Honors to grant unto your orator
the writ of subpoena issuing out of and- under the seal
of this Honorable Court, direoted to the said defend¬
ants, Lambert Company mid Thomas B. Lambert indi¬
vidually and ns an official of the said Lambert Com¬
pany, commanding them and each of them, by a
certain day and under a certain penalty, to be
and appear in this Honorable Court, then and
there to answer to the premises and to stand to and
abide such order and decree as may bo made against
them. .
And your orator will ever pray.
Edison Phonoqbaph Company,
By Thomas A. Edison,
_ _ President.
Isham, Lincoln it Beale,
Solicitors for Complainant.
Eiohaed N. Dyeii,
Of Counsel for Complainant.
State of New Jersey, ?
County nt Essex, J88-'1 ■*
Thomas A. Edison, being duly sworn, deposes and
says that he is the president of Edison Phonograph
Company, the complainant named in the foregoing bill
of complaint ; that ho has read the said bill and knows
tho. contents thereof; that the same is true to his own
knowledge, save as to the matters therein stated to ‘be
Notice.
alleged on information and bolief, and ns to those .
matters he believes it to be true ; and that he verily
believes himself to bo the first, original and sole
inventor of the improvements in phonogram blanks
set forth in Letters Patent Nos. 382,418 and 382,462,
referred to in the said bill of complaint.
Thomas A. Edison.
Subscribed and sworn to be- )
fore me this 29th day of /
64 December, 1900. )
[seal.] J. p. Randolph,
Notary Public for New Jersey.
UNITED STATES CIRCUIT COURT,
rHEnN Distbiot of Illinois — Northern Division.
National Phonograph Company,
Complainant,
Lamdert Company and Thomas B. I
LAMDEnT, !
Defendants.
Thomas P. Sheridan, Esq,,
Solicitor for Defendants,
Marquette Building, Chicago, Illinois :
Piease take notice that the complainant herein will
he sfat« „f N0nyT rank,L,Dyel'- of Montclair, in
the State of New Jersey, and others, each and all of
whom reside more than one hundred (100) miles from
the place of trial herein, and more than one hundred
T. A. Edison.
T. A. Edison.
UNITED STATES CIRCUIT COURT.
Northern District op Illinois.
Lambert Company and Thomas I
Lambert,
Defendants.
Lambert Company and Thomas B.
Lambert,
Defendants.
West Orange, New Jersey, October 18th, 1902.
Met pursuant to notice.
Present — Richard N. Dyer, Esq., for complainants ;
828 Thomas F. Sheridan, Esq., for defendants.
Thomas A. Edison, a wituess called on behalf of the
complainants in the above-entitled suits, having been
first duly sworn, deposes and says in answer to in¬
terrogatories propounded to him by Mr. Dyer as
follows :
1 Q. You are the inventor named in the three pat¬
ents in suit, numbered 382,418, 382,402 and 414,761,
nre you not ?
A. I am.
2 Q. Have these inventions been utilized commerci¬
ally, and if so, to what extent ?
A. They have been utilized to a very great extent
commercially. From the time that the first
commercial phonograph was put on the market
to the present time, there have been upwards of two
hundred thousand phonographs sold to the public in
all parts of the world, all of which have employed
the inventions of the patents in suit. Most of these
phonographs have been sold by the National Phono- 330
graph Gompnny, and also by another compuny who sell
the phonograph under the name of the "Graplio-
phone," which I license under my patents. In fact,
all commercial phonographs which have been sold em¬
ploy these inventions.
3 Q. What relation did the inventions of the patents
in suit bear to the development of the commercial
phonograph ?
A. The inventions in the patents in suit nre one of
several which made the phonograph commercially 331
practical. Previous to 1889 a large number qf attempts
had been made to devise a phonograph which could be
handled by inexperienced persons, so that a machine
shipped to any part of the world could be worked by
any person without the necessity of having an expert
to show them how to manipulate it, but just from
simple printed instructions. In 1889, by a number of
small inventions, this object was accomplished, and
from that time the phonograph in the bands of the
publio worked successfully mid was commercial. One 33^
■ of the earlier forms of phonographs was put out by the
Graphopliono Company, but on account of the compli¬
cation of the devices used it was found not to be com¬
mercial, and all the machines put out were withdrawn
from the market. The Gmpliophone Company then
took a license under our patents, and have since put
out the phonograph in the same form as is now uni¬
versal, employing the inventjons in this litigation.
The devices which made the phonograph com¬
mercial when used by inexperts wore very simple in
T. A. Edisc
,-ere enormously important in nocom-
oct. These inventions were the dis¬
ks use of mechanism to hold the
ition on the phonograph, and the
he simple dovico of a tapering mandrel
cylinder. Another invention wkiok
it practical was the use of a floating
icli the recorder and reproducing points
; was found almost impossible to get
run true, and therefore the floating
i recording point permitted the use of
were not accurately true when rotated,
which helped to make it commercial
cylindrical recording and reproducing
material, like sapphire. It is almost
lese three devices that the phonograph
jssential that the blank should be made
me material or two materials both liav-
ifficiont of expansion. A large number
3 made to form n compound cylinder
b outer recording material, but on ac-
ng able to obtain a cylinder the inner
i bad the same coefficient of expansion
i compound cylinder had to be aban-
nt of the largo amount of breakage due
changes of temperature. Finally a
entirely of the same material was
is is shown particularly in patent No.
blank being of the same material
1 withstand any change in temperature,
kwas reamed out, tapered, and the
olid, but it was found after a time
is surface did not hold as well on the
il, and that wax chips and dirt would
md" to break the cylinder when it wus
Iso make it run out of true, and tkere-
> was cast with the cylinder and this
it the mandrel of the phonograph. This
turning the outer surface of the oylin-
, . 337
dor more true when the phonograph was revolved, and
to also hold the cylinder with sufficient force so that in
the not of turning off the cylinder to make a new record
it would not be forced along the taper and loosened.
In foot, by this simple device all mechanism for seem¬
ing the cylinder was dispensed with, and tho most in
experienced person could at once put the cylinders on
and off the phonograph without any instructions or
any skill required, and this form with these ribs lias
been universal since then-introduction, and many mill- 338
ions have been sold. They are employed also by the
Graphoplione Company and all foreign makers of
phonograph cylinders.
Cross-examination by Mr. Sheridan :
iglit you had made a tapered
o in mechanics, a cylinder with
4 x-Q. It was old long before you made this i;
t'.on to use tapered cylinders ill other arts, was it
Mr. Edison ?
A. I clon't know.
5 x-Q. Then you tli
cylinder for the first t:
ft tapered bore ; did y
.A. I don't know that. I know that tile invei
solved the problem in u simple manner— what we
G x-Q. Didn’t you know that in tho art of ineclu
generally, tapered spindles wore old ?
A. I don’t know whether I did or not. I don’
membor.
7 x-Q. Don’t you know thnt they have used in watch
lathes tapered bearing for n long time, tapered bush¬
ings?
A. I don’t recall to mind any just now. If they have,
it is a matter of record.
8 x-Q. Then you thought thnt yon were the inven¬
tor of a tapered mandrel and a tapered cylinder in the
arts generally ?
A, I. thought I was the inventor of a way of holding
a phonograph cylinder on a tapered mandrel.
the early days the Grnpliopho
)er cylinder on which there w
but the wax was so soft that und
But we desired to use a wax that was very hard,
very hard wax makes a better record and stands
when the reproducing point is passed over it, it is
14 H„°" th,il'k *,n8 y°m'.co,ltiug °f hard wax?
A. Well, we und them in various thicknesses. Some¬
times we had them live thousandths, sometimes twenty
thousandths, sometime* oven thicker.
15 x-Q. How thick e««ld you go on the outer eoat-
ln8? W!lat was t||0 thickest you over used of wax
with the inner tube 0f different materiul ?
A. I think the thickest wax contiug we have used
was about thirty thousandths of an inch.
16 x-Q. And when you abandoned this inner tube or 346
sustaining material y0„ also made the wax cylinder not
only homogeneous h„t » groat deal thicker, did you.
A. Yes, sir; so tlmt it would have strength of its
own and didn’t req,,jro ,he backing.
17 x-Q. Do you ret.olleot how thick yon made it
when you first abandoned the different material ?
A. My impression j* tlinfc it was about three-six¬
teenths thick outsido of the ribs.
18 x-Q. Did your firHt phonograms made entirely of 347
wax contain ribs ?
A. At first they didn't have any ribs, but they would
not iiold on well.
19 x-Q. How thick were the materials that didn’t
have any ribs ?
anlnch 'V lmpIeSSioi‘ >» tIl0Y wore nbout a quarter of
20 x-Q. And the rennoii they didn’t hold well
without ribs was Umt the dust would accumulate „.a
between the two tap0rM the taper of the bore and the 348
taper of the spindlo ?
^es ’ ^or rout1011 and for the reason they
aidn t have the elasticity between the ribs.
.1 21 tl0 you moan by << elasticity between
the nbs ?
A. The wax has a cortnbi degree of elasticity, and
m forcing them on tlJo luJi»clrel this elasticity was used
to a certain extent.
22 x-Q. But the pritl0f jml reason, however, was to
allow space in which dirt in chips might accumulate
that wouldn’t throw them out of true ; is that not so ?
Legal Department Records
Phonograph - Case Files
New Jersey Patent Company v. Columbia Phonograph Company,
General
This folder contains material pertaining to the suit brought by the Edison
interests against the Columbia Phonograph Co., General, in the U.S. Circuit
Court for the District of New Jersey. The case was initiated in April 1 905 and
involved Jonas W. Aylsworth's U.S. Patent 782,375 on record blank
composition. The case, also known as the "carnauba wax case," was settled
in June 1908, along with the American Graphophone Company v. National
Phonograph Company cases ("Macdonald composition cases") heard in the
same court. The selected items consist of the following portions of the
printed record: index, bill of complaint, and testimonies of Edison and
Aylsworth.
l_ ec^oJ Bojt f 44>
GIRCUirGOURT OF THE UNITED STATES
District of New Jersey.
NEW JERSEY PATENT1 COMPANY
COLUMBIA PHONOGRAPH COMPANY. GENERAL.
In Equity.. On Letters Patent No. 782,375..
RECORD.
PRANK L. DYER,
DELOS HOLDEN, .
Of OounscJ.
PHILIP MAURO,
C. A. L. MASSIE,
.. Of Counsel.
FRANK L. DYER’,
Solicitor for Complainant.
PHILIP MAURO,
Solicitor for Defendant
District of . New, Jersey.
NEW JERSEY PATENT COMPANY
COLUMBIA PHONOGRAPH COMPANY; GENERAL.
In Equity. On Letter’s Patent No. 782,375.
INDEX.
11II.I, 01' COMPLAINT.
United States Circuit Court, District of New Jersey.
New Jersey, Patent Company,
Complainant,
COLUMMA PHONOGRAPH COMPANY
General,
Defendant.
Bill of Complaint.
(Filed April 5, ypoj.)
To the Honorable the Judges of the United States Circuit Court
for the District of New Jersey.
New Jersey Patent Company, a corporation created, organ¬
ized and existing under and by virtue of the laws of tbe State of
New Jersey and having its principal office at West Orange,
County of Essex, in said State, brings this, its bill of complaint
against CoLUMitiA Phonograph Company, General, a cor¬
poration created, organized and existing under and by virtue of
the laws of tbe State of West Virginia, and having a regular anti
established place of business at Paterson in tbe District of New
Jersey, wherein some of the acts of infringement hereinafter
complained of were committed.
And thereupon your orator complains and says :
I.-. That heretofore and before the 29th day of October, 1903,
Jonas W. Aylsworth of East Orange in the State of New Jersey
and a citizen of the United States was the original, first and sole
inventor of a certain new and useful improvement in Composi¬
tions for Making Duplicate Phonograph Records, fully described
in the Letters Patent hereinafter mentioned, and which had not
been known or used by others in this country before his invention
or discovery thereof, and which had not been patented or described
in any printed publication in this or any foreign country before
his invention or discovery thereof, or more than two years prior
to his application for Letters Patent therefor hereinafter men¬
tioned, and which had not been patented or caused to be patented
by the said inventor or his legal representatives or assigns in a
country foreign to the United States on an application filed more
than twelve months prior to his said application for Letters Patent
of the United States, and which had not been in public use or
Bill in Equity on
.Letters Patent
No. 782,375-
ip COMPLAINT.
on sale in the United States for more than two years prior to
his said application; and which had not been abandoned.
2. That on or about the said 29th day of October, 1903, the
said Jonas W: Aylsworth, by an instrument in writing hearing
that date duly signed and delivered, and recorded m the United
States Patent Office on the 5th day of November, 1903, did sell, .
assign and transfer to your orator, New Jersey Patent Company,
its successors or assigns, the entire right, title and interest in
and to the aforesaid invention and in and to any Letters Patent
of the United States which might be granted therefor as by
reference to said instrument, or to a duly authenticated copy
thereof, ready in Court to be produced, will more fully and at
large appear. . ...
3. That on the 3d day of November, 1903, the said Jonas W.
Aylesworth being as aforesaid the original, first and sole inventor
or discoverer of the said composition, made application in' writing
to the Commissioner of Patents of the United States for the grant
of Letters Patent therefor, and paid into the Treasury of the
United States the fees required by law and then and there fully
and in all respects complied with all the necessary conditions and
requirements of the statutes of the United Slates m such case
made and provided. And thereupon, due examination having
been made by the Commissioner of Patents as to the novelty and
utility of the said invention as provided by law, the Commissioner
of Patents caused to be issued to your orator, New. Jersey Patent
Company, Letters Patent in due form of law, under the seal of
the Patent Office of the United States, signed by the Commis¬
sioner of Patents and bearing date the 14th day of February,
1905, and numbered 782,375 ; and that the said Letters Patent
did grant unto your orator and unto its successors and assigns
for the term of seventeen years from the date thereof, the exclu¬
sive right to make, use and vend the said invention throughout
the United States and the territories thereof, as by reference to
said Letters Patent or to a duly authenticated copy thereof, ready
in Court to be produced, will more fully and at large appear.
■ 4. That your orator is now the sole and exclusive owner of the
said Letters Patent No. 782,375, and of all claims for infringe¬
ment and violation thereof.
5. That the said invention is of great public utility and has been
introduced into extensive public use by your orator and its
licensee, National Phonograph Company; and that your orator
and its said licensee, have at all times stood ready and still stand
ready and are able to supply all public demands for said inven-
COMPLAINT.
6. That the defendant, well knowing the premises, and the
rights secured to your orator as aforesaid, but contriving to in¬
jure your orator and to deprive your orator of the benefits and
advantages which might and otherwise would accrue unto your
orator from the said invention, after the grant of said Letters
Patent No. 782,375 and before the commencement of this suit,
as your orator is informed and believes and therefore avers,
within the District of Jersey and elsewhere in the United States,
without license or allowance and against the protest of your
orator and in violation of its rights,, did, unlawfully and wrong¬
fully make, use and sell, and cause to be made, used and sold,
and that it is now making, using and selling, and causing to be
made, used and sold, in the City of Paterson, State of New Jer- .
sey, and in said District aforesaid, phonograph record composi¬
tions, employing, and containing the invention set forth in said
Letters Patent No. 782,375 ; that said defendant still continues so
to do, and that it is threatening to continue the aforesaid unlawful
acts to a large extent, all in defiance of the rights secured to
your orator as aforesaid, and to its great irreparable loss and
injury, and by which your orator has been, and still is being
deprived of great gains and profits which it might and other¬
wise would have obtained, but which have been received and
enjoyed by the said defendant through its said unlawful acts
and doings. And your orator further shows that it has caused
notice to be given to said defendant of said infringement and
of the rights of your orator in the premises and requested de¬
fendant to desist and refrain therefrom, but that said defendant
disregarded said notice and refused to desist from said infringe¬
ment and still continues to make, use and sell phonograph rec¬
ords embodying and containing said invention. And your orator
further shows that as to the number of records employing or
containing or making use of said composition which have been
by the defendant as aforesaid unlawfully made, used or sold,
and as to the extent; of the gains and profits received and en¬
joyed by said defendant from such unlawful making or using
or selling, your orator is ignorant 'and prays a discovery thereof.
8. And your orator therefore prays as follows :
That the defendant may be required by a decree 'of this Hon¬
orable Court to account for. and pay over to your orator such
gains and profits as have accrued or arisen, or been earned or
received by the said defendant by reason of the said unlawful
doings, and all such gains and profits as would have accrued
to your orator but for the unlawful doings of said defendant,
and all damages your orator has sustained thereby, and that
ip COMPLAINT.
the Court may assess said profits and damages and may increase
the damages to a sum not exceeding three times the amount
thereof.
That the defendant and its associates, officers, attorneys, ser¬
vants, clerks, agents and workmen, may he perpetually enjoined
and restrained by writ of injunction issued out of and
under the seal of this Honorable Court, from directly
or indirectly making or causing to be made, using or caus¬
ing to be used, or selling or causing to be sold, any phonograph
records embodying, employing or containing the invention and
improvement set forth and claimed in the said Letters Patent
numbered 782,375 or from infringing upon or violating the said
Letters Patent in any way .whatsoever.
That your Honors will grant unto your orator a preliminary
injunction issuing out of and under the seal Of this Honorable
Court, enjoining and restraining the said defendant, and its as¬
sociates, officers, attorneys, servants, clerks, agents and work¬
men, to' the same purpose, tenor and effect as hereinbefore prayed
for with regard to the said perpetual injunction.
That the said defendant may be decreed to pay the costs of
this suit; and
That your orator may have such other further relief as the
equity’ of the case may require.
To the end therefore, that the said defendant may, if it can,
show why your orator should not have the relief prayed for,
and may full, true and direct answer make, but not under oath
'(answer under oath being hereby expressly waived), accord¬
ing, to the best and utmost of its knowledge, remembrance and
belief, to the several matters hereinbefore averred and set forth,
as fully and particularly as if the same were repeated paragraph
3° ]jy paragraph, and the said defendant specifically interrogated,
may it please your Honors to grant unto your orator a writ of
subpoena ad respondendum, issuing out of and under the. seal Of
this Honorable Court, directed to the said ■defendant, Columbia
Phonograph Company, General, commanding it to appear
and make answer to this Bill of Complaint, and to perform and
abide by such orders and decrees herein, as to this Court may
seem just.
„ And your orator will ever pray, etc.
NEW JERSEY PATENT COMPANY,
40 By JOHN P. RANDOLPH,
FRANK L. DYER, Secretary.-
Solicitor for Complainant.
FRANK L. DYER,
DELOS HOLDEN,
Of Counsel.
i [
; :
,
ANSWER.
State or New Jersi
County of Essex
* h
John F. Randolph, being duly sworn, deposes and says that
he is the Secretary of New Jersey Patent Company, the com¬
plainant named in the foregoing Bill of Complaint; that he has
read the same and knows the contents thereof to be true except
as to those matters stated to be alleged on information and belief,
and as to those matters he believes it to be true; that the reason
why his verification is
because it is a- corpora1
lade by the complainant personally is
JOHN F. RANDOLPH.
Subscribed and
[1- s.]
sworn to before me this 1st day of April, 1905.
FRANK L. DYER,
Notary Public, State of Ncsv Jersey,
Commission Expires February, igoS.
In the Circuit Court of the United States, District of New Jersey.
New Jersey Patent Company,
Complainant, I11 Equity No.
vs. -Suit on Patent
Columbia Phonograph Co., Genl., No. 782,375.
Defendant. ■
Answer to Bill of Complaint.
(Filed June 5, 1905.)
The defendant, the Columbia Phonograph Co., General,
answering to the bill of complaint herein, or to so much thereof
as it is advised is material and proper to be answered unto,
answering says: That it, the defendant, is a West Virginia cor¬
poration and has a place of business at Paterson, New Jersey, and
that it believes the complainant to be a New' Jersey corporation, .
as alleged in said bill of complant.
And further answering, said defendant says:
Defendant denies each and every allegation of paragraph num¬
bered 1 in said bill of complaint. •
1 86 complainant’s iiishuttal proops.
United States Circuit Court, District of New Jersey.
Nkw Jimsiiv Patisnt
Columbia Phonograph
Gknhral.
Company
Company,
In Equity No. 12,
.On Letters Patent No.
7S2.375
Cpmplainant’s Rebuttal Proofs.
(Piled March iS, rpoy.)
Testimony, in rebuttal for complainant, taken before Hknry
D. Oliphant, a Standing Examiner of this Court at the office
of Frank L. Dypji, Esq., West Orange, N. J., commencing Fcb-
1 nary 19U1, 1907.
Present — Frank L. Dyiir, Esq., for Complainant, C. A. L.
MassiH, Esq., for Defendant.
JONAS W. AYLSWORTH, a witness called on behalf of
20 complainant, having been first duly sworn, deposes and says as
follows :
DIRECT EXAMINATION, by Mr. Dykr :
Q. 1. You have already testified in this case, I believe?
A. Yes sir.
Q. 2. In your patent in suit front line 41 page 1, to line 5, page
2, you point out certain peculiarities which you state that a com¬
position adapted particularly for. making molded records should
have. Regarding these alleged peculiarities, is it to be under¬
stood that at the date of your invention they were all new char-
30 actcristics of a phonograph composition ?
A. The statement in the patent of the peculiarities which an
ideal molded record composition should possess was prepared by
me and was embodied in the specification in almost my exact lan¬
guage. I sought there to point out the peculiar properties .ivhich
should be possessed by the composition to fit it most perfectly for
the molding process and to give to the resulting molded records
desirable physical characteristics. The statement was prepared
without any particular reference to the novelty of the individual
peculiarities of the composition, because the composition is to be
40 regarded as a complete accomplishment. It would be a very
simple matter in this art to realise one, or perhaps a number of
these ideal conditions; for instance, as to hardness, limpidity,
and freedom from decomposition products, but the difficult prob-
AYLSWORTII.
1cm was to produce a composition in which substantially all of the
characteristics were realized in one and the same composition.
Q. 3. Have you read the depositions of Messrs. Macdonald
and Thornberry, taken on behalf of defendant herein?
A. I have.
O.4. It seems to he the opinion of Messrs. Macdonald and
Thornberry that with the exception of the fact that with your
composition, or a composition embodying your invention, the
material is somewhat harder than the blank composition used
before your invention, all the other peculiarities or characteristics
pointed out by you as defining an ideal molded record composition'
are realized in the use of the old blank composition. I will, there¬
fore, take up serialum the statements of the patent, in which these
peculiarities of an ideal molded record composition are set forth,
in order that the Court may have the benefit of your views
thereon. The patent stales ( p. 1, lines 40-45 ) that :
“In the first place the composition should be very
limpid when in a molten or plastic state so as to flow
into intimate engagement or contact with the record
surface and thereby permit a very sharp impression to
be received.”
Messrs. Macdonald and Thornberry (in answer to Q. 22 and
Q. n respectively) testify that in respect to limpidity, they per¬
ceived no difference between a composition employing no car-
nauba at all, and a composition employing- “a substantial amount
of carnauba wax.” What, if anything, liav-e you to say as to
their views on this point?
A. I observe in the first place that both Mr. MacDonald and
Mr. Thornberry attempted to compare the limpidity of the two
compositions by a mere inspection or eye test. Limpidity is a
molecular condition, and the eye test would be a ycry crude and
uncertain way of making a comparison on this point, unless the
variations were very discernible. Of course, one might observe
by inspection that gasolene was more limpid than molasses, but
it would be impossible to tell by the eye that gasolene, for ex-,
ample, was more limpid than water. It is of course evident
that if we are dealing with a very viscous, material, it will not
take. as sharp an impression of a fine record as a more limpid
material ; hence, the greater the limpidity the more perfect the
impression will be that is received from the mold. When car¬
nauba wax is molten, it is as thin and limpid as water, whereas,
many of the c tl er ngredient re more viscid. The addition of
an appreciable percentage of such a very limpid material to the
pidity. Not only would this follow as a necessary conclusion,
but I have made tests to determine the comparative limpidity of .
the two compositions. In making these tests, I floated on the.
two compositions, maintained at the same temperatures, a metallic
funnel having a small opening in the bottom and ascertained the
time required for the funnel to fill and sink. I was surprised to
see how very close the readings were in making these tests, and
I determined that the composition employing carnauba was about
10% more limpid than the blank composition in which carnauba
Q. 5. The patent in suit (p. 1, lines 46-50) states:
“It should be free of decomposition products, which
would otherwise result in the generation of gas, form¬
ing bubbles, which would destroy the commercial char¬
acter of the record surface.”
Messrs. Macdonald and Thornberry state that this characteristic
is true of the blank, composition as well as of a molded record
composition employing a substantial quantity of carnauba wax.
Do you agree with them in this matter ?
A. I agree with them. It is necessary that any composition
from which records are made, whether by directly recording on
a blank cylinder or by molding, should be free of decomposition
products which might result in gas bubbles. This is even more
true of a blank composition than of a molded record composition,
because with a molded record composition gas bubbles 'might
exist below the surface without doing harm, whereas, with a
blank composition if bubbles existed below the surface, they might
be disclosed during the shaving of the blank or during the for-
10 mation of the record. This freedom from decomposition products
is not a new characteristic of my improved composition. It is
and lias been a desirable and necessary characteristic 111 a blank
composition ; but in making a satisfactory molded record com¬
position the problem to be solved was to produce a composition
in which this desirable property of the blank composition would
be retained. I11 other words, viewing my improved composition
as consisting of the old blank composition modified by the addi¬
tion of a new ingredient, added in a new way to produce new
results, the problem was to so modify the blank composition that
*° while obtaining new results necessary in the molded record art,
I should still retain the desirable characteristics which the blank
composition itself possesses.
Q.6. The patent in suit p. 1, lines 50-52) states:
“It should be of excessively fine texture or grain, so
as not to produce extraneous sounds when the repro¬
ducer rubs over it.”
On this point, Messrs. Macdonald and Thornberry testify that
from their observations, there is no difference between the blank
composition and a composition employing a substantial amount
of carnauba wax, as described in the patent in suit. Do you agree
with them?
A. I do. I do not claim that the smoothness of record sur¬
face is a new characteristic of my improved composition. It was
not necessary to improve the record surface, because the surface
of the ordinary blank composition is very smooth. The problem
was to produce a composition which, while it should have the
desirable properties necessary in the molded record art, should
retain the smooth surface of the blank composition. Many in¬
gredients might be used which would add hardness to the com- '
position and make the resulting records more durable, but it was
a difficult matter to strike the exact composition that should have
all the additional properties that are important in the molded
record art, while still retaining the desirable properties that were
known in the manufacture of compositions for phonograph
blanks. Mr. Edison has given a good deal of thought to molded
record compositions, and before my invention, suggested the
possibility of using as ingredients for hardening materials, rela¬
tively gritty substances like chalk or fine precipitates. While
the addition of these materials would harden the composition;
they would make the surface rough.
Q. 7. The patent in' suit (p. 1, lines 52-55) states:
“It should be very hard when set, so as to reduce
wear as much as possible, due to the tracking of the re¬
producer.”
Messrs. Macdonald and Thornberry both admit that when
even a relatively small percentage of carnauba wax is used, the
wearing qualities of the records are very perceptibly increased. : I
suppose you agree with them on this point?
A, Yes, I do. Mr. Macdonald, however, is not, I think quite
right in his explanation of the cause for the increased durability.
As :1 understand his testimony, lie believes that when carnauba
wax is introduced at a high temperature it merely makes the com¬
position harder and therefore more durable. . My experiments
have shown me that durability of the record surface is due more
to the toughness of the material rather than to its hardness. . I
found that when the carnauba is added at a low temperature it
COMPLAINANT’S R1SBUTTAL
makes the composition considerably harder than -when added at
a high temperature. This is stated in the patent page 2, lines
101-107. When' the carnauba is added at a high temperature,
chemical reactions take place, which toughen the composition and
increase its durability.
0.8. The patent (p. 1, lines 55-69) states:
“It should have the capacity of passing from the
liquid to the solid slate through an intermediate con¬
dition of gradually-reduced plasticity, to thereby en¬
able the duplicate to shrink internally and toward the
surface, so as not to clear the mold until quite hard,
to thereby preserve the record, instead of chilling very
rapidly at the surface to form a relatively hard film,
which tends to shrink away from the mold even when
the mass of the material is still molten, since f find that
materials having this latter characteristic are not suit¬
able for the purpose, owing to the danger of the rec¬
ord-surface being injured under the effect of the un¬
equal chilling.”
Messrs. Macdonald and Thornberry as to this point, state that
they observed no difference between the composition employ¬
ing a very substantial annrnt r ‘ ':..i-inuha and the ordinary blank
composition. Do you agree with them?
A. Yes. I think they are correct. The particular phenomena
which takes place during the setting and contraction of my im¬
proved composition, except possibly in degree, are those which
attend the setting and contraction of the blank composition.
,Q. 9. Are you familiar with the art of making phonograph
blanks as well as the art of making molded records?
: A. Yes. I have been in close touch with both arts since their
inception. Phonograph blanks, exactly as they -are now made,
have been so manufactured for more than ten years and their
composition has been used since 1888 or 1889. I have frequently
witnessed, the manufacture of phonograph blanks, and have been
often consulted as an expert where difficulties have been met
with;
Q. to. Having reference to these phenomena attending the
■setting and shrinkage of your improved composition, as well. as
the prior blank composition, are they of equal importance in
the two arts, namely, in the manufacture of molded records and
in the manufacture of phonograph blanks?
A. No; I do hot consider that they arc of equal importance. In
the manufacture of molded records, it is absolutely necessary that
JONAS W. AVI.SWOUTII.
191
the material should set and become hard while in contact with
the mold, so that the record will retain its form in the minutest
detail and that then the material should shrink away from the
mold, so as to permit the removal of the record. But, in the
manufacture of blanks it is quite unimportant whether the ma¬
terial shrinks away from the mold or not, before it is entirely
hard, because in the manufacture of blanks it is always the prac¬
tice to shave them off before they arc used. As a matter of fact,
ill blank manufacture, the blanks are forcibly pulled out of the
molds while they are hot and still sticky and a very rough surface 10
results. The difference between the molded record art and the
blank art is that with the former the surface must be entirely
finished while in the mold, whereas, with the latter, the surface is
always finished by shaving after removal from the mold. There¬
fore, these phenomena regarding setting and shrinking arc ab¬
solutely necessary in the molded record art, whereas so' far as the •
blank art is concerned, the ideal composition would be one which,
after it had set, would shrink away from the mold while its
surface was still more or less soft and plastic, in order that the
operations might' be performed with greater rapidity. I11 other 20
words. 111 the blank art. the particular phenomena under con¬
sideration make it necessary to forcibly remove the blank from
the mold in order to save time in manufacture.
Q. 11. Do you agree with Messrs. Macdonald and Thornberry
that- the two compositions are the same in respect to the statement
in the patent in suit (p. I, lines 69-71) that:
"It should not be sticky or tenacious so as to adhere
to the mold when set, even to the smallest extent.”
A. No, I do not agree with them. In this respect the peculiar
property of the carnauba composition is that it stays in contact 30
with the mold for a considerable longer time than the blank com¬
position, so that when the material leaves the mold, its tempera¬
ture is considerably lower than' is the case with the blank com¬
position. Since its temperature is lower, the record surface is
harder, so that there is less danger of the material sticking to the
mold than with the blank composition. Furthermore, since the
carnauba composition is perceptibly tougher than, the blank com¬
position, it is enabled to detach itself freely from the mold with
lass danger of any part of the surface being torn off. I have made
many thousand experiments with the blank composition and with 4°
the carnauba composition and I have satisfied myself that in this
respect the carnauba composition is decidedly superior to the
blank composition. Of course, it is possible by exericsing great
care to obtain reasonably satisfactory results with the blank coni-
position, so far as this particular point is concerned, but under
the conditions of commercial manufacture the percentage of dis¬
cards with the blank composition due to sticking to the molds
would be considerably greater than with the carnauba composi¬
tion operated under the same conditions.
Q 12. Have you made any experiments recently with the
blank composition and with the carnauba composition to deter¬
mine the correctness of the view expressed in your last answer .
o A ■. I have. I had made under my direct supervision and ob¬
servation about one hundred records from each of several com¬
positions, including the ordinary blank composition and that of
the patent in suit, as well as a composition employing the per¬
centage of carnauba wax used by defendant, and also the pat¬
ented composition foamed off at a low temperature so as to avoid
chemical reaction. All of these records were made under exactly
the same conditions of operation and temperature as nearly its it
was possible to observe. .
Q. 13. Please refer now to the point referred to in Q. 11, m
30 reference to the relative stickiness or tenacity of the patented
composition as compared to the ordinary blank composition and
state whether your experiments indicated any superiority of the
patented composition in this respect? '
A. They did show the superiority of the. patented composi¬
tion in this respect over the blank composition. All of the rec¬
ords molded from the blank composition had a more or less dull
surface which was especially noticeable on the thick end of the
record, which is the end which shrinks loose from the mold first,
as a rule. It was necessary for the records to be burnished with
20 cotton a great deal longer to make them of a uniform glossy ap¬
pearance than is necessary with the patented composition, which
in most cases requires no burnishing at all, but the recoi d is com¬
pleted in the mold with a smooth and brilliant surface.' The ef¬
fect of this dull surface makes the reproduction sound somewhat
rougher and less perfect than it does with the patented compo¬
sition. This fogginess of tile record made of the blank com¬
position results in leaving the mold dirty, since a small part of the
record surface is left on the mold, which necessitates more fre¬
quent cleaning than when the patented composition is used.
40 Q. 14. In the present development of the molded record art.
would you consider a composition to be, successful that resulted
in the presence of a more or less foggy surface on the records
and necessitated frequent cleaning of the molds, to. which you
have just referred? 1 ...
JONAS W. AYLSWOltTII.
193
A. I- would not. Of course, it might be possible by frequent
cleaning Of the molds to minimize the effect and by burnishing
the molded records to make them so that the fogginess would
not be noticed so far as the eye is concerned, yet, those records
Which had such defects would not be perfect as compared with
those made with the patented composition, so far as reproduction
to the ear is concerned.
0. 15. Are you able to state whether this cloudy appearance
due to the sticking of the blank composition to the mold in manu¬
facture was developed only on a small percentage of the records,
or on a considerable part of them?
A. It was developed on nearly all of them, or in fact as far as
1 observed, on all of them. I did not pick up each record and ex¬
amine it in this respect, but in looking over them as they stood
on the trays, they all seemed to have the foggy effect. ’
Q. 1 6. And was this foggy effect present on the records made
of the patented composition?
A. Only in a very few instances,
Q.17. Was it present in the composition made in which the
same percentage of carnauba was used as defendant employs?
A. Not in any greater degree than the patented composition.
Q. j8. And what about the composition where carnauba was
used in an uncombined state?
A. I do not remember of noticing the effect in particular in
this composition. This effect when it occurs on a dark composi¬
tion like that of the patent, is very much more conspicuous than
■it is on a lighter colored composition like the blank composition
or, the composition containing carnauba, which was not heated
to a high temperature. The effect to be noticeable at all in a
light composition must be relatively great, and in the case of the
blank composition it was- very apparent and was difficult to
remove even when the burnishing was carried , to the extent of
injuring, the surface.
Q. 19. The patent (p. i, lines 71-74) states:
“It should be capable of shrinking away from the
mold when quite hard by a reduction in its temperature.”
Messrs. Macdonald and Thornberry state that so far as they
could determine by ah eye test, there was ho difference in this
respect between the carnauba composition of your patent and
the blank composition. Do you agree with them?
A, Substantially yes, although as I have just pointed out,
with the blank composition the material leaves the mold when
the record is at a higher temperature that with the patented com-
194 COMPLAINANT’S HIiBUTTAI, l'HOOl'S.
position, so that there is always clanger of the material adhering
to the mold and producing a foggy surface. If the expression
“quite hard” means that the composition should he hard enough
as to overcome this difficulty, then I. would not agree with Messrs.
Macdonald and • Thornberry that, the two compositions are the
same, because as I have pointed out, one results in records having
foggy or cloudy surfaces, or in which such surfaces are likely
to occur, and the other does not.
Q. ao. The patent states (p. i, lines 74-76) that:
. “It should have a very smooth and polished surface
so as to eliminate foreign noises, due to the tracking of
the reproducer.”
As a result of your experiments, did you observe any difference
in this respect between the patented composition and the blank
composition ?
A. There was a difference, as T have already said. With the
records, made of the patented composition, the surface upon leav¬
ing the mold was highly polished and brilliant, whereas, with the
blank composition, the surface was more or less cloudy and foggy,
and required burnishing to give the' polished effect. If the at¬
tempt is made to use the latter records without burnishing them,
they would be very rough. The' burnishing merely improves
the appearance to the eye, but the reproduction is still objection¬
able and full of foreign noises.
Q. 21. The patent (p. 1, lines 77-80) states:
“It should be free from air and gas babbles, which
if present at the surface would destroy the commercial
character of any duplicates containing them.”
Do you agree with Messrs. Macdonald and Thornberry as to
the substantial identiy of the two compositions, SO' far as this
characteristic is concerned ?
A. Yes, each composition was equally free of gas bubbles and
products of decomposition.
Q. 22. The patent in suit (p. 1, lines 80-82) states:
"It should shrink uniformly without warping, so as
to be capable of effective use with standard talking-
machines.”
Do you agree with Messrs. Macdonald and Thornberry as to the
identity of the two compositions in respect to this characteristic?
A. No, from the blank composition a great many records had
to be discarded on account of warping, which made- the records
out of round and unsuitable for' use on the phonograph. The
presence of carnauba wax in the composition has the very valuable
property of producing substantial!
materially reducing any tendency t<
Q. 23. Is this property of the j:
importance in the two arts of makir
phonograph blanks ?
A. No, it is not. In making phonograph blanks, the blanks
are allowed to season for a time before they are finished either
on the inside or the outside, so that it becomes possible to make
them perfectly concentric and they can be thus fitted for use with
the phonograph. But with molded records, they cannot be thus 10
seasoned, and finally finished, but. have to be completely finished
while in the mold, so that no further operations can be performed
on them in the way of tracing them up or making them con¬
centric. A molded record must have the capacity of shrinking
uniformly, which is not important in the manufacture of blanks,
nor is it realized in the blank composition. The experiments
which I have made show that the blank composition shrinks
irregularly and 11 large percentage of the records had to be dis¬
carded because they are not sufficiently concentric for use.
Q. 24. Are you familiar with the molded records that were 20
first manufactured and sold by defendants as molded records
shortly after the Edison records were first put on the market?
A. I saw a number of these records shortly after the Edison
records were put on the market which were marked “Columbia”
records.
Q. 25. I show you a record and ask if you can identify it as
one of the early Columbia molded records?
A. Yes, that is exactly the appearance of the records that I
saw, to which I have referred.
Q. 26. Can you tell from the appearance of that record whether 30
it was finished completely in the mold?
A. This record has not been finished completely in the mold.
It has been cut or reamed after the material was cold, which is
seen by the smooth burnished surface on the top of the ribs on
the interior of the record. The record appears to be somewhat
oval, as is seen by the ribs being more completely cut away on
one side than on the opposite sitle. This effect is very charac¬
teristic of the blank composition and was experienced in the ex¬
periments which I made. It, however, was overcome in a meas¬
ure by placing them on cores before they had entirely cooled, but 4°
even with this precaution the effects were still noticed in the
this would be expected, since I infer that it is made of the same
composition that the defendant now uses, employing carnauba.
It is admitted by counsel for defendant that the
record last referred to by the witness is identical with
the records marketed by defendant, after the change in
its present composition.
Q. 30. Referring again to the patent in suit, it states (p. 1,
lines S3-8G) that :
“It should not be affected by moisture, so as to be
' preserved in damp climates, and it should have a high
melting-point, so as not to soften in hot localities.”
Messrs. Macdonald and Thornberry have expressed the view that
as to this point the carnauba composition of the patent is identical
with the blank composition. Is this so?
A. Not entirely. As regards being affected by moist air in a
JONAS
containing carnauba is rather superior to the blank composition.
Tests which we have repeatedly made to determine this point
have always shown the carnauba composition to be superior to '
the blank composition. Records were put in a box which was
was placed a vessel containing water which saturated the atmos¬
phere in the box. Then the time it took to develop a roughness
on the surface was noted. The difference as I remembr it was
very marked under these conditions. Furthermore, when we were
making the mechanically duplicated records on the blank com- -
position, many complaints came in from various parts of the
country and many records were returned owing to the surface
becoming damaged by moisture and mildew, the mildew effect
being such as is produced on leather in damp dark cellars. Al¬
though there have been many million records made of the pat¬
ented composition, I do not recall a single instance of this mildew
effect taking place or of any records being returned on account of
'this defect.
Q. 31. To what do you attribute the superiority, of the car¬
nauba composition in this respect?
A. Probably to some antiseptic quality which is imparted to
the composition by reason .of the carnauba or possibly the lamp
• black.
Q.32. Referring again, to the fact that the composition should
not be affected by moisture, what ingredient in the composition
is relied upon to produce this effect?
A. The hydrocarbon ingredient (i. e. the ccresin) and the
carnauba wax ingredient.
Q. 33, When carnauba wax is used, is it possible to employ
a smaller percentage of the hydrocarbon ingredient to get the
same anti-hygroscopic effect?
A: It is, but the’ records become rather more brittle so that it
is necessary to add 'sufficient quantity of the hydrocarbon ma¬
terial not only to assist in the prevention of the moisture effect,
but also to soften or temper the composition.
Q. 34. The patent states (p. 1, lines 86-90) that : : .
“When hot, it.should be capable of being cleanly cut
in reaming without dragging or chipping, so as to pre¬
sent a smooth clean surface on the bore of the dupli-
Do you agree with Messrs. Macdonald and Thornberry that in
this respect, the carnauba composition is the same as the blank
composition? A. Yes, essentially the same.
Q. 35. Is this quality of the same importance in the molded
record art as in tile blank art ?
A. It is of no importance in the blank art', because in the manu¬
facture of phonograph blanks, the latter are all reamed out on
their interior after the material is seasoned and is entirely cold.
Therefore, it is immaterial in the blank art whether the material
cuts smoothly while hot, or not. In the manufacture of molded
records, however, it is highly important that the material should
cut smoothly while hot, because they have to be finished or sub- •
stantially finished while still in the mold, and they stay in the
mold only when they are in a heated condition. This peculiarity
illustrates one of the problems met in making a successful molded
record composition. It was necessary to make a composition
which, while having the new properties necessary for the molded
record art, should still retain the desirable property possessed by
the blank composition, but not utilized in the blank art.
Q. 36. The patent (p. 1, lines 90-92) says:
“Preferably it should be of a very dark color to per¬
mit imperfections to be better observed.”
What is the practical commercial value of this feature in the
molded record art?
A. It enables the imperfections of molding to be more readily
discovered, and that by simple eye tests, than is the case where
records are of light color. It furthermore gives them a uniform¬
ity which is commercially desirable, since the trade prefers a uni¬
form dark colored record. They might get a dark record one
time and a very light on another time, if the composition were
not made uniformly dark. As it is not possible to make them
uniformly light without great waste of material, due to the dis¬
carding for scrap, the way to obviate this difficulty is to make
them uniformly dark, which, as stated, possesses the additional
advantage of permitting them to be more perfectly inspected.
Q. 37. Finally, the patent (p. 1, line 92, p. 2, line 105) states:
“It should be perfectly amorphous and non-crystal¬
line, since the latter materials harden very quickly at the
surface when their congealing temperature is reached
and shrink irregularly, with the objections pointed out.”
Do you agree with Messrs. Macdonald and Thornberry that
as to this feature, the patented carnauba composition is the same
as the blank composition?
^. Essentially the same. But, here again, .the problem was
to produce a molded record composition which, while possessing
the new features necessary in that art, should retain the desirable
properties of the old material.
JONAS
199
Q. 38. The position of defendant in this case seems to be that
the composition of your patent consists simply in taking the old
blank composition and adding carnauba wax to it for the purpose
of hardening the mixture, and that since carnauba was a known
ingredient in connection with waxes such as ozokerite and bees'
wax for the manufacture of record materials, no invention would
he required on your part to produce the patented composition.
Do yon agree with this conclusion ? In answering you might ex¬
plain the direction of your experiments and investigations which
led to the production of the patented composition.
A. When I started experimenting on making molded records
over five years ago, 1 first attempted to make the records of the
blank composition, hut these attempts were not successful at that
time. It was apparent that the molded record composition should
he considerably harder and more durable than the blank com.-
position, and also, that we would have to pay no attention to
the property of the blank composition so far as its peculiar fitness
for receiving the record impression by cutting was concerned.
The duplicate records as formerly made by mechanical means,
were limited to a material which could he readily cut, and conse¬
quently, such records were more easily worn on reproduction than
are the records as made today from the patented composition.
My experiments were then directed toward producing a harder
and more durable material and which at the same time would not
have the objections which I encountered with the blank compo¬
sition in attempting to mold it. I recall that the composition
which we called “hard regular” was tried, that is, the blank cojn-
position omitting the ccresin, which is very much harder than
the blank composition with ceresitt, but this material could not be
satisfactorily molded as it was very irregular in shrinkage, and
shrunk loose from the mold before the record. could be finished.
Various materials were, then mixed with the “hard regular” to
try and overcome this difficulty in the matter of shrinkage with¬
out much success being attained. Among the materials experi¬
mented with, were asphalt, various varnish gums, rOsin, shellac,
carnauba wax and Florida clay mixed with the. “hard regular,”
with and without ceresin, but none of these materials at first pro¬
duced satisfactory results. In many cases, they did not satisfac¬
torily mix with the hard regular wax, and in other cases where
they did mix, the shrinkage and molding properties were not1
favorable. I remember to have used carnauba wax in these ex¬
periments but it was not until the composition was made em¬
ploying carnauba and in which the temperature had been raised to
complainant’s wjuuttal proops.
a very high degree that a successful result was obtained. I real ¬
ize that in the refinements of the art as practiced to-day, many
compositions can perhaps be successfully molded, but at that time
the one composition that stood out alone as being the only one
which we could. consider sufficiently perfect to go ahead with in
manufacture was the composition of the 'patent in suit. During
this work I made several hundred experiments trying all sorts of
combinations and was engaged several months in the search, the
result of which was that my investigations were narrowed down
to the composition of the patent in suit. That was the only com¬
position- that seemed to meet all the desirable peculiarities neces¬
sary, in the new art, both as to its molding properties and as to
its properties in the final records themselves. As to the position
of defendants, I can only say that the composition of the patent
in suit, or the possibility of using carnauba wax in connection
with a metallic soap mixture, was not obvious to me. I had no
way of knowing that carnauba wax would properly mix with tile
metallic soap composition. I could not tell whether the carnauba
would add desirable properties to the metallic soap composition
1 without destroying its good properties already possessed by it.
As a matter of fact, I had been perfectly familiar with the prop¬
erties of carnauba for more than ten years, and if I would have
taken anything for granted it would be that carnauba was quite
unsuitable for the purpose. The making of the patented compo¬
sition was effected only after many experiments were made.
Q • 39- The position of defendant seems to be that anyone
position would naturally turn to carnauba wax as the proper in¬
gredient to be used. In the companion suits. Numbers io and
ii, based on the Macdonald patents, your note books have been
introduced, -illustrating your work in connection with the pro¬
duction of phonograph compositions from 1888 to 1895. Kindly
refer to these note books and state what materials you were
familiar with as a result of those experiments that you might
have used is the only problem to be solved was the hardening
of the blank composition?
A. In the experiments referred to, I had occasion to test prac¬
tically all known materials, many thousand in number, which
might be used in the art, and among the .materials with which
I was familiar at the date of the experiments, which resulted
in the patented composition and which might have been used as
hardening ingredients, are the following:
JONAS tv. AYLSWORTH, 201
Shellac,
Myrtle wax,
Naphtholine,
Asphaltum,
Kauri gum,
Gum Dammar,
Syrian asphalt,
Hard Mexican .asphalt,
Sulphur,
Ceresin residue,
Paraffin residue,
Lead palmitate,
Aluminum stearate.
Q. 40. Would any of these hardening ingredients except cai-
uauba be suitable for use in the molded record art?
A, Not as practiced to-day; what the future may bring forth zo
I do not know. 1
Q. 41. Then of this list of hardening ingredients, the only one
that possesses all ’of the properties necessary for making a suc¬
cessful molded record composition is carnauba wax?
A. That is correct. The recollection of my early experience
with molding compositions was that carnauba wax, in fact, was
not very favorable, and it was quite by accident that the carnauba
composition was tried at all. I remembered that it was difficult to
mold even a blank from compositions which contained much car¬
nauba as it had such a shrinking effect as to make it very difficult 30
to cast the blanks successfully. Knowing this effect of shrinkage
which carnauba possessed, it was not considered by me a very
promising experiment when I first tried it, and I recall that car¬
nauba was used in a number of experiments which were not very
successful. This I attribute to the fact that with these experi¬
ments the materials were probably not heated sufficiently to
produce the reactions. In making preliminary experiments of
this kind, I seldom used the thermometer, excepting when making
up a large amount, but I usually judged the temperature more
by the eye than by the thermometer and could easily have made 40
compositions with carnauba and not heated them a sufficient time
to produce the reactions, and consequently in that way may have
lost its valuable properties.
Q. 42. On that very point, the position of defendant seems to
be that since the composition is foamed off with die carnauba at
die same temperature that was maintained before the carnauba
was added, the obvious tiling for any one to do would lie to beep
up tlie temperature during the addition of carnauba. VVliat, if
anything, can you say 011 this point, as a result of your expcri-
A. I do not consider that it would be obvious to beep up the
temperature to the point at which the original blank composition
IO' was foamed off, because as a matter of fact in making experi¬
ments in which the blank composition is used, some regular stock
blank composition is usually melted and requires 110 foaming off,
and if mixtures are to be made they may be made as soon as the
wax is melted sufficiently for them to mix. O11 the contrary, the
average experimenter would be careful not to overheat such a
mixture, especially if lie saw that if he did a reaction was going
on which might convey to him the impression .that the materials
were decomposing. And these reactions do go on for a consider¬
able period of time, generally from one to five hours, and unless
20 a person knew in advance that these reactions were going to pro¬
duce some change in the material that would be favorable, he
would, I believe not use a high temperature, and if he did use a
high temperature, and observed that decomposition was taking
place, I believe he would reduce the heat or possibly start over
again under the belief that he had spoiled the experiment. As a
matter of fact, although 1 have made a great number of experi¬
ments in this art, the expedient of heating the composition to a
high temperature and maintaining it at a high temperature until
all reactions hacl ceased, was the result of an accident, due to the
.30 fact that I left a batch of the composition in a heated condition
and during my absence the temperature increased so that when I
returned the reactions had taken place. When I examined this
accidently-made composition, I found that I had discovered the
exact material that 1 had been' looking for.
Q. 43. Please examine tli.e patents which have been granted in
this art, and point ont the materials mentioned therein as suit¬
able for the manufacture of phonograph records, indicating
specifically any materials or combination of materials that may
have been suggested prior to your patent for the manufacture
40 of molded records?
A. I have examined the several patents granted in this art up
to the date of the application for the patent in suit, and find that
they disclose the following ingredients or compositions for use
JONAS W. AYI.SW0UT1I, 20J
Tinfoil and paper are referred to in Edison patent No. 200,251
of February 19th, 1S7S;
Steel and oilier metals referred to in patent to Reynolds, No.
.387,1(16 of October 23, 1883;
A mixture of bees' wax and paraffine is referred to in the
patent to Bell & Tainter, No. 341,214 of May 4U1, 1886;
Iron is referred to in the patent to Tainter, No. 341,287 of
May 4II1, 1S86;
Paper parchment and metal are referred to in patent to Ber¬
liner No. 372,786 of November Sth, 1S87;
Boiled tar; pitch . resin, asphalt and dental wax arc referred
to in the patent to Herrington, No. 392,953 of November 13th,
188S; ■
A mixture of carnauba and bees’ wax or ceresin wax, of paraf¬
fine, or bay-wax is referred to in patent to Tainter No. 393,190
of November 20, 18S8;
Metallic soaps are referred to in patent to Edison No. 393,96s
of December 481, 1888;
Celluloid, glue, wax, molasses, pitch and asphalt, or two or
more of such materials in combination, and particularly a mixture
of celluloid, molasses and bees’ wax are referred to in patent to
Herrington No. 397,856 of February 12th, 18S9;
Wax, resin, pitch, celluloid, glue and rubber are referred to
in patents to Herrington, No. 399,264 of March 12th, 1SS9, and
No. 399,265 of March 12th, 18S9;
A mixture of stearic acid and ceresin is referred to in patent
to Edison No. 400,648 of . April 2d, 1889. In this patent the
stearic acid is referred to as a “desirable hardening material.”
Metallic soaps are referred to in patent to Edison No. 400,649
of April 2d, 1889. The patent also refers to the use of a wax
or a combination of waxes.
A mixture of oleate of lead and palmitate of magnesium is
referred to in patent to Edison No. 400,650 of April 2d, 1889.
A hard metallic soap is referred to in patent to Edison No.
406.570 of July 9th, 1889;
Hard metallic soaps are referred to in patent to Edison No.
406.571 of July 9th, 1889. This patent states that the surface
may be softened by applying to the same a weak alkaline solution
or even moistening the same with water. I recall the experiments
mentioned in tiiis patent very well, the idea being to make it
possible to remove a continuous shaving. The special surface
treatment seemed to make the material slightly cohesive, but it
did ngt toughen it in the sense that I use the word in my patent,
for the purposes of the invention. After conccntratu
by boiling it becomes harder and tougher, changing
color from a brownish black to a deep black. It is lb
applied in a thin layer or coating' to the foundation
paper or other material, and on cooling is turned dov
until a perfectly smooth surface is obtained.
. In heating the ozokerite wax a high temperature
necessary, in order to produce the concentration desin
At 250° Fahrenheit the vaporization proceeds vt
slowly, and it is customary to employ a temperature
400° Fahrenheit and upward. The duration of I
trontmont will, of course, depend on the temperati
As is well known, ozokerite is impure or unrefined ccresin,
This is always contaminated with a considerable proportion of
volatile constituents, which make it soft and' under the effect of
heat, these volatile constituents are driven off, so that the material
more closely resembles ccresin. Cercsin is harder and tougher
than ozokerite, even when the latter is concentrated as described
in this patent. Continued heating of ccresin does not increase its
toughness, because there are no more volatile constituents to be
driven off, but such treatment actually makes the material softer,
since it tends to split up the hydrocarbons of which it is formed, iq
Metallic oleates and stearates, such as oleates and stearates of
lead, magnesium and aluminum, are described in Edison patent
No. 430,274 of June 17th, iSyo. The patent stales that these
metallic soaps “may he employed alone, or mixed with other ma¬
terials, such as waxes, resins, or gums.”
Plastcr-of-Paris, sealing wax. a mixture of shellac and sand,
or shellac and sawdust, and asphalt, are suggested as materials
from which to form the base or support of a composite record
in Edison patent No. 430,570 of June 17th, 1890;
A mixture of gutta pcrclia and resin to be applied to a founda- 29
tion tube of muslin or paper is suggested in patent to Ileysmger,
No. 440,155 of November nth, 1890. The same composition is
described in patent to Heysingcr No. 460,338 of September 29th,
1S91, which in addition refers to hardening the mixture by the
employment of more or less starch, or by a solution of chloride
of zinc. The patent also suggests a mixture of gutta pcrclia and
a resin soap. It also suggests that linseed oil may be used as one
of the ingredients, and that caoutchouc may be substituted for the
gutta pcrclia.
Boiled tar, pitch, resin, asphalt, and dental wax are suggested 39
in patent to Herrington, No. 464,476 of December i, 1891.
Wax, resin, and Plasterrpf-Paris are suggested in patent to
Edison No, 484,582 of October 18th, 1892. This is the first pat¬
ent that refers specifically to the casting of mqided records, but
obviously the materials suggested are unsuited for the practice of
the art at the' present time,
A mixture of asphalt and Japan wax is suggested in the patent
to Edison No. 488,191 of December 20th, 1892.
Ozokerite wax applied to a foundation of paper is suggested
in patent to Wasscnich, No. 505,910 of October 3d, 1893.
Celluloid is suggested in the patent to Liorct, No. 528^273 of
October 30th,. 1894. This patent describes a duplicating process
in which a heated blank is expanded outwardly into contact with
JONAS \V. AYLS WORTH.
206 complainant's KHDUTTAl. proops.
the mold, instead of being cast therein, as in the modern molded
record art.
.Hard rubber trad celluloid are suggested m patent to Berliner,
No. 548,623 of October 29th, 1S95.
Sealing wax is suggested in patent to Berliner, No. 564,586 of
July 28th, 1896. .
The ordinary blank composition consisting of a mixture ot
stearic acid, stearate of soda, stearate of aluminum and ccresm,
is- suggested in patent to Macdonald No. 606,725 of July 5*h,
to 1S9S. This blank composition was the development of my ex¬
perimental work largely under Mr. Edison's direction in lSSS
and 1889, and was put on the market in this country, by tile Edi¬
son Manufacturing Company and the Edison Phonograph Works
as early as 1S89, or more than seven years before the application
for this patent was filed. Since 1889 all phonograph blanks have
• been made of tliis composition.
Cellulose and vulcanized rubber are disclosed in the patent to
Lambert No. 645,920 of March 20th, 1900.
Celluloid is referred to in patent to Stevens, No. 650,431 of
20 May 29th, 1900.
Vulcanite and celluloid are referred to in patent to Wolcott,
No. 650,739 of May 29th, 1900.
Celluloid, a mixture of wax and rosin, water-glass, plastcr-of-
Paris, starch and bees' wax and rosin, are materials which are
referred to for the manufacture of molded records in patent to
Capps, No. 666,493 of January 22nd, 1901.
A mixture of metallic soap and ceresin is described in patent
to Edison No. 667,202 of February 5th, 1901. This is the or¬
dinary blank composition ;
30 A mixture of stearate of soda, palmitate of soda, stearate of
lead, oleate of lead, colophany or rosin, and ceresin, is disclosed
jn my patent No. 676,111 dtaed June 11th, 1901;
A mixture of stearic acid and ceresin is suggested in reissue
patents to Macdonald No. 12095 and 12096 of March 10th, 1903.
These patents also refer generally to soap mixtures, which would
include the ordinary blank composition. These patents describe
the manufacture of molded records.
A mixture of pyroxyline, camphor and a suitable adulterating
pigment, such as zinc, white kaolin, baryta, magnesium; red lead
40 or colored mineral earth, for the manufacture of molded records
by it casting process is suggested in the patent to Petit, No. 683,-
979, dated October 8th, 1901, which also refers to the formation
of a surface coating of celluloid or pyroxyline composition.
207
Substantially the same materials are suggested in the patent to
Petit, No. 689,117 of December 17th, 1901, except that for the
formation of the surface coating, gelatine, lac, glue, gum, and co-
lodion are suggested. In this latter patent to Petit, the process
is one in which a blank is expanded in contact with the mold, and
is not cast as in the modern art.
A large variety of materials and compositions for the manu¬
facture of molded records made, however, by an expanded pro¬
cess are suggested in patent No: 7 - ■ t: iVison of Novembcr
II til, 1902. These are the following:
(a) Asphalt,
(b) Stearic acid, or stearate of soda, mixed with chalk,
slake lime, or lamp black,
(c) Sealing wax or shellac, mixed with chalk,
(d) Polished ebonite,
(c) Vulcanized hard rubber,
(f) Celluloid,
(g) Glue, either alone or mixed with chalk.
A mixture of bees’ wax and rosin is suggested in patent to
Jones, No. 727,960 of May 12th, 1903, as a blank composition. 20
In the examination which I have made above, I think I have
included all the American patents in this art in which materials
or compositions are suggested as suitable for the manufacture of
blanks or for the manufacture of molded records. In none of
these patents is there a recognition of the special conditions of the
art, or of the desirable properties which a suitable molded record
composition should possess. Nor is any composition described
which I would consider as suitable for the manufacture of molded
records, except in a very crude and ineffective way.
Q. 44. Of the many suggested ingredients for use in the manu- 30
facture of phonograph records that you found in the patents in
this art, what ingredients would be suitable for addition to the
ordinary blank material, if thi only thing that had to be done was
to increase its hardness?
A. The following are the materials which might be suitable
for hardening ingredients : .
Carnauba wax, ' ,
Asphalt, ■ :
Metallic soap,
. Celluloid, ■ ,4p
Glue, . .. 1. ..
Resins,
Magnesium Palmitate,
Gun cotton,
Ebonite,
Lead stearate,
Magnesium stearate,
Aluminum stearate,
Piaster-of-Paris,
Shellac,
Sand,
Sawdust,
: io Gutta Perclia,
Sealing wax,
Stearate of soda,
Vulcanite, . .
Chrumatizcd gelatine,
Rosin,
Colodion,
Chalk,
Slake lime,
Lamp black.
20 Q. 45. Please state how many of these ingredients could he
' actually used as an addition to the blank composition • for the
purpose of producing a satisfactory composition for the molded
record art? A. Carnauba wax.
Q. 46. Why could not the others be used ?
A. Because some of the materials, such as asphalt, celluloid,
gun cotton, glue, ebonite, vulcanite, chromotizcd gelatine, and
colodion, would not form a homogeneous mixture. Others, such
as rosin, gutta perclia, sealing wax, resins and shellac, and metallic
soaps, like magnesium pahmtate, magnesium stearate, aluminum
ao stearate, and lead stearate, would not convey the, proper proper¬
ties of shrinkage necessary in this art. Stearate of soda, though
possible as a hardening ingredient if added to the blank com¬
position, is undesirable for the reason that it would make the
material hygroscopic and would not resist wear effectively.
Still others, such as sand, sawdust, chalk, plaster-of-Paris, lamp
black and slake lime, might be mixed in the form of a fine
ground powder, and would have a hardening effect,, but the re¬
sulting surface would be too rough for the proper .reproduction
of the sound record.
40 Q. 47. Referring now to prior patents, which specially describe
compositions for use in the molded record art, I first direct your
. attention to the Edison patents of February 5th, 1901, Nos.
667,202 and 667,662 respectively, and ask if the compositions
described therein are suitable for the art and if not in what re¬
spects they would be unfitted therefor?
A. The compositions referred to in the patents are in one case
a mixture of molten metallic soaps, and in the other case a mix¬
ture of a metallic soap or combination of several soaps, to which
has been added a material not affected by water, such as cercsin.
The latter material corresponds with the blank composition, to
which 1 have already referred, and is not a suitable material for
the practice of this'art for the reasons which I have already given
in detail. The blank composition is too soft and as I have already
explained, does not possess the proper requirements as to shrink¬
age. A metallic soap without cercsin is equally unsuitable, be¬
cause of its improper shrinkage, and further, because it would be
very hygroscopic..
Q. 48. Having reference to your own patent No. 676,111,
dated June 1 itli, 1901, is this composition suitable for the molded
A: The composition referred to in patent No. 676,111, is a
mixture of stearate and palmitate of soda, stearate and palmi-
late of lead, oleate of lead, colophony and cercsin. This com¬
position was made for the purpose of molding records there¬
from, but owing to its peculiar properties of solidifying, I was
not able to utilize it for that purpose, although it made very good
material for blanks, owing to its perfect homogeneity, the ma¬
terial being so free from crystalline structure tljaf it was trans¬
parent or nearly transparent. It had the desirable properties of
wearing well, but it could not be successfully molded, as a record,
although it would be molded for use as a blank. The material had
tile property of shrinking away train the mold before the mass
had become sufficiently hard to retain its shape. That is, the
outer layer or the layer next to the bore of the mold would
become hard enough to leave the mold whn the interior was still
almost fluid, so that when the attempt wa? made to ream it the
record invariably turned in the mold. The material furthermore,
was very tough while warm, which made the reaming operation
quite difficult, and when in a molten condition and at a tempera¬
ture at which the molding operations were performed, the ma¬
terial was rather viscid and did not flow well into the indentations
of the mold, so as to take a sharp impression.
Q. 49. Am I to understand from this patent that you did npt
take up, as a matter of course, the blank composition with the
idea of modifying it,. so as to fit it more perfectly for the molded
210 COMPLAINANT’S U15UUTTAL PIlOOl'S.
record art, but that you attempted to make a completely new
composition for that art?
A. That is correct. My knowledge of what had been done in
the way of experimenting on molded records by Mr, Edison and
Dr. Schultz-Berge, his assistant, using the regular blank com¬
position and other compositions, led me to believe that it
was not a desirable substance to work with, and I tried
many other compositions before trying the blank composi¬
tion at all. One of these compositions was that which is
mentioned in the patent referred to in your last question. It
was not until I had failed in making an entirely new composi¬
tion suitable for the practice of this art that I came to a full
realization of the desirable properties possessed by the blank
composition and concluded that if it were properly altered to
suit the new conditions, it might be used. As I have previously
testified, I did not succeed in imparting to the blank cotnpositon
the desirable new properties which it should have without de¬
stroying any of tile desirable properties which it already pos¬
sessed, until the composition of the patent in suit was accidently
discovered.
Q. 50. Please refer now to the two Macdonalo reissue patents
of March to, 1903, No. 12095 and 12096 respectively, and state
whether the compositions referred to therein are suitable for the
practice of the molded record art? '
A. In these patents a composition of stearic acid and ccresin
is mentioned, and such a composition is not suitable for the prac¬
tice of this art, for the reasons, first, it cannot be practically
molded ; second, it does not have the required wearing properties ;
and third, the material is n‘o,t sufficiently coherent to leave the
mold clean, which would result in a foggy surface on the record.
Possibly, in these patents, -the patentee may have had the blank
composition in mind, as be refers to “the composition at present
employed” and if this is so, I have already pointed out the un¬
desirable .properties of that composition for this art.
Q. 51. Kindly consider the patent to Petit, No. 683,979, clatecl
October 8th, 1901, which refers to making molded records and
state whether the composition referred to is suitable for the
practice of the art?
A. In the patent referred to in your question, the composition
mentioned, is pyroxylin and camphor, mixed with a quantity of
pigments, such as zinc and kaolin and baryta, magnesium, red
lead, colored mineral earth, or similar suitable materials. I do
not consider that this composition would be suitable for the prac-
JONAS W. AYI.SW0UTII.
tice of this art even to the slightest extent by a casting process
as described by this patentee. All modern molded records arc
now’ made by casting processes. This material does not become
sufficiently fluid to lend itself to a casting process. Furthermore,
the material would not present a sufficiently smooth surface to'
produce the perfect results which arc necessary in this art, and
the composition, on account of the volatile constituent (camphor),
would change considerably after the record had been made, which
would cause it to become distorted and with a roughened sur¬
face. Furthermore, this composition would not lend itself well 10
to the manufacturing operation, as it would be difficult to remove
from the mold by tile method of shrinkage and longitudinal ex¬
traction. If sufficient pressure were used with the composition,
it might possibly be molded, but this is not the present practice
of the art, which requires a composition that can be perfectly cast.
Furthermore, this would be a very expensive composition and
even if it could be practiced successfully it would not be de¬
sirable because the operations would be so slow and tedious. The
art requires a composition which can be molded rapidly.
Q. 52. Kindly consider the patent to Petit, No. 689,117, dated 20
December 17th, 1901, and state whether this patent describes a
composit t I that would be suitable for the practice
of the art by a casting process?
A. The patent referred to in your question mentions a com¬
position of celluloid, which is practically the same as that men¬
tioned in my last answer, and is open to the same objections. In
addition to the celluloid composition, mention is made of a sur¬
face film composed of gelatine, lac, glue, gum, colodion, or
similar material. These materials are also open to the same
objections its celluloid. ■ jj0
Q. 53. Kindly refer to Edison patent No. 713,209, dated No¬
vember nth, 1902, and state whether you find in this patent,
suitable compositions or materials for the practice in the molded
record art by a casting process?
A. The patent referred to in your question refers to the fol¬
lowing materials or compositions :
(1) Asphalt,
(2) Stearic acid or stearate of soda, mixed with chalk,
slake lime, or lamp black,
(3) Resins, such as sealing wax or shellac, mixed with 40
chalk,
(4) Polished ebonite,
• (5) Vulcanized hard rubber,
• (4) Ebonite is not suitable, because it docs not become liuia
enough to cast.
(5) Vulcanized hard rubber would have the same objection
lo as. ebonite.
(6) Celluloid lias the objections pointed out in connection
with the Petit patents.
(7) Glue alone, or mixed with chalk, is too sticky and cannot
be removed from the mold, Furthermore, if it could he removed
from the mold, it would not he suitable on account of it being
susceptible to atmospheric moisture and it also warps, and in the
case of mixtures of glue and chalk, they would he too rough for
the proper reproduction of sound records.
Q. 54. Are your criticisms of the materials mentioned by. Mr.
3° Edison in his patent based on the actual knowledge of experi¬
ments with these specific compositions or materials, or are they
based on your general familiarity with the art?
A. They are based on my knowledge as derived from witness¬
ing experiments made by Mr. Edison and his assistants and fron
experiments which I'have piade myself.
Q. 55. Arc you able to state of your own knowledge whcthci
Mr. Edison at any time ever attempted to solve the problem 0
producing a satisfactory molded record composition suitable to
this art?
.40 A. Yes, I recollect that as far back as 1889, Mr. Edison mad
many experiments in attempts to mold duplicate sound records
In connection with these experiments, I made a number of com
I monograph Works, and was later sold through the North
American Phonograph Company, and the other the Graphophone,
which was. manufactured by the American Graphophone Com¬
pany and was later also controlled by the North American Phono¬
graph Company. The Edison phonograph in those days was a
crude and imperfect machine as compared with the perfected in¬
struments of the present date, but it contained the germ of . the
modern phonograph. More particularly, it made use of a blank
that was in appearance, practically identical with modern blanks
although the composition wits relatively soft and sticky. The
composition used was composed of a mixture of cercsin and
carnauba wax. Improvements' were made very rapidly, so that
by 1890 the phonograph was a very perfect instrument and con¬
tained practically all the features of the modern machine.* jfjPhe
graphophone, on the other hand, was a very different machine
from the modern graphophone, and made use of a blank jifclittle
over an inch in diameter and about six inches long anilf-was
formed of a paper tube coated with a mixture, as I now recall,
composed largely of ozocerite. No change was made in the
graphophone blanks so long the the original form of machine was
retained. Sometime in 1888, I developed the modern: blank com¬
position consisting of free stearic acid, stearate of. soda,, stearate
of alumina and cercsin, from which all Edison blanks! have. been
made from 1889 onwards, up to the present time. 'This com¬
position was an enormous improvement over compositions 'for¬
merly used, and made the Edison: Phonograph a i milch: better
machine than the graphophone. . From that time, onwards, for
several years, very few, if any, grapliophones were used,, as they
appeared to have been entirely displaced by the.'Edison, phono¬
graphs. At first, the phonograph was used largely! for dictation
purposes, but gradually a demand was. created for: musical 1 rec¬
ords. from six to a dozen beinrr made at the same time Iw the
Examination by Mr. AYLSWORTI-I is continued.
Q. 57. Will you produce a copy of the patent covering tin
process referred to in your last answer as having been develop®
by Mr. Miller and- yourself?
A '. I produce a copy of this patent, which was granted Octobe
1st, 1 got, arid numbered 683,615.
Q. 58. Referring now to the experiments which you state wet-
40 made for the purpose of comparing the patented compositio
with certain other compositions, and referred to in answer t
Q. 12, when were those experiments made?
A In the latter part of December and during the first, tw
JONAS W. AYLSWOItTII.
Q. 59. Were these experiments observed by any one except
yourself?
A. Yes, they wore witnessed by Messrs. Holden, and Dodd,
as to the making of the composition, and by Messrs. I-Iolden and
Nehr, as to the molding of the records from the imposition;
the inspection was witnessed by Messrs. Holden, Sturms and
Payne. Of course, the actual molding of the records and the '
inspection was done by operators in the factory who regularly
do that work.
Q. 60. Please explain now what particular compositions were 10
made for the purpose of these experiments, giving the ingre¬
dients, temperatures, and methods of manufacture in each, case?
A. The following compositions were made; designated re¬
spectively, A, B, C, D, and E:
Composition A is the composition of the patent, omitting the
cercsin and carnauba and lamp black ingredients. This com¬
position is what is known in the factory as “hard regular,” and
it was made to use as a basis for forming the other compositions.
B, C, D, and E.
Composition B is a recording blank or tablet composition ; . 20
that is to say, the composition of the patent, less the carnauba
and lamp black ingredients, it differing from A in that it con¬
tains ceresin.
Composition C is composition A plus both cercsin and car¬
nauba wax in the proportions of the patent in suit and is in all
respects the same as the patent in suit with the exception 'of the
omission of -the lamp black, arid the temperature of making
the wax was kept low, the temperature not exceeding 320° F.,
at which temperature no reactions appear to take place as evi¬
denced by foaming. '30
Composition D is composition A to which carnauba and cere-
sin arc added in substantially the proportions used by defendant
and at the temperatures practiced by defendant, wltich was prac¬
tically the same. as that of the Aylsworth patent, the only dif¬
ference being a somewhat smaller percentage of carnauba than
that mentioned in the patent. '
Composition E is composition A with carnauba, ceresin and
lamp black in the proportions of the patent, and formed by the
same methods as mentioned in the patent so as to produce the-
reactions between the carnauba and the balance of the coriinosi- -40
‘ion.
The carnauba wax used in these experiments was the regular
article of commerce which had been previously washed with boil- .
2 1 6 COMPLAINANT’S HKBUTTAI, PliOOPS.
ing water; then, after separating from the water, it was heated
to drive off any contained water and then filtered. In order to '
supply enough material to fill the dipping tank with each experi¬
ment, it was necessary to make in all about 1G00 pounds of com¬
position A„the base composition from which the others were
formed. Each separate experiment required about 450 pounds.
This composition A was thoroughly foamed off at 440° F. before
filtering. It' took about an hour to foam off the material so that
it became perfectly free from scum or foam. After filtering, the
10 material was poured 1 in pans and cakes formed of it, which were
marked by Mr. Holden and myself. This material was set aside
to be used for the compounding of the four compositions used
in the experiment. The proportions of the ingredients used in
forming composition A were —
800 lbs. stearic acid,
3616 grams of Caustic soda,
1400 , grams of sheet ’aluminum,
172 lbs. of sal-soda,
These materials were mixed in the same manner as ■ described in
2.0. the patent: and are in the same proportions with the exception of
the omission of ceresin, carnauba and lamp black. The material
was made in two lots, using the same charge and proceeding in
the same manner with each lot.
Composition 13 was formed by taking 450 pounds of composi¬
tion A, and adding thereto 94 pounds of ceresin. Composition
A was first melted at a temperature raised to 390° F. when the
94 pounds of- ceresin was added, and the temperature increased
to 440° F. and filtered. No foaming whatever took place. The
composition was started at .10 A. M. December 28th, 1906, and
'30 was finished on the same day at r.30 P. M. The congealing point
wasi tested by Mr. Dodd and was found to be 290° F. After fil¬
tering the wax was transferred to the dipping tank and the tem¬
perature allowed to fall at 290° F. and the dipping started. 93
records were dipped, and each record was allowed to stand on
thexores for about -two hours. They were then set aside to he
put through the finishing operation and the regular factory in¬
spection, which was done 'On the following' day, the results of
which and. of the other composition which were made are tabu¬
lated on. one sheet 'for purposes of comporison, which tabulation
'4° wilhifollow after the description of the balance of the composi¬
tion. The molding was done under the personal supervision of
Mr. Nehr, Mr. Holden and myself witnessing them. The finish¬
ing, and part' of the' inspection were done in Mr. Sturm’s Depart-
JONAS W. AYLSWOKTir. 217
ment ; the final inspection was done in Mr. Payne’s Department.
The other compositions, namely C, D and E, were molded fin¬
ished and inspected in the same manner and by the same opera¬
tors, 'as was done with composition B.
, Composition “C.”
433.1 lbs. of composition “B” (which contains
35S.3 lbs. of composition A,
74.8 “ “ ceresin) I0
was melted and brought to 350° F. and 72.5 of the purified car¬
nauba before mentioned was added, which brought the tempera¬
ture down to 3 io° F. The temperature was then raised to 320°
F. and held for a short time. The total time for making the com¬
position from start to'iinish was about four hours. The congeal¬
ing point was regulated by Mr. Dodd to make it exactly the same
as with composition B, namely 290° F. After filtering the wax
was transferred to the dipping tank and G5 records were molded
under practiclly the same conditions as were maintained with the 20
molding of composition B. These records were set aside to be
finished in the same manner as composition B.
. Composition D.
412.5 lbs. of composition A is melted and brought to 400° F.
and 57.6 lbs of the purified carnauba was added and the tempera¬
ture then raised to 460° F., and held at this 'temperature for two
hours before adding ceresin, 70.5 pounds of which material and
pounds of lamp black were then added and the temperature main- j0
tallied at about 460° until all foaming ceased, which took about
•t'A hours from the time the carnauba wax was added. Foam¬
ing began to form soon after the carnauba was melted, and the
foam raised to a height of 5 inches over the surface of the com¬
position so that there was a continuous formation of foam and
ebullition of gas for nearly four hours. It ceased to foam while
the temperature was still maintained at 460° and the temperature
even raised higher than 460° toward the end, without producing
more foaming. The congealing point of this composition was
regulated by Mr. Dodd to 290° the same as. in the other composi- 40
tions. The material was filtered and transferred to, the dipping
tank and 95 records molded under practically identical conditions
■i bulatcil results of the four experiments, B, C, D and B,
follows:
No. Cracked Chipped Blow Broken Not round v/o
Molded & Edges Holes in & Good Good
Broken handling Run Out
93 io 6 5 2 56 . 14 IS
6s '17 7. 8 o 23 10 15.4
95 18 8 4 o 35 30 31.6
86 7 7 4 o 40 28 32.5
Q. 61. Am T correct in understanding that as to the four com-
sitions referred to in your last answer, composition B, is the
:linary blank composition, which you have frequently referred
; composition C is the exact composition of the patent made at
ow heat insufficient to effect chemical reaction ; composition D
tlic composition used by. defendant, being that' of the patent
th a smaller amount of carnauba wax, and composition E is
Q. 64. Do I understand correctly that the figures given in the
first column of this table represent all of the records molded from
the several compositions?
A. No, these were not all of the records molded of the several
compositions. As a matter of fact of composition B, 103 records
were molded and ten were rejected for defects which were not
due to the composition, and in composition C, 101 were. molded
and thirty-six were rejected for defects not due to the composi¬
tion, and in composition D, 99 were molded and four were re¬
jected for defects not due to the composition, and in composition
E, 103 were molded and 17 were rejected for defects not due to
the composition,
Q. 65. What were these defects that you say were not due to
the composition and because of which certain of the records were
rejected?
A. They were defects which are known as “rings;” that is,
concentric lines formed around the surfaces of the records, due
to the speed at which the mold was lowered into tiie wax com¬
position. Another defect was wax chips, which is caused by
little particles of wax, breaking off from the record at the ends,
usually in withdrawing from the mold; these being electrical
arc frequently attracted inside the. mold and stick on the surface
of the mold leaving an imperfection. Another defect is what we
called “bruised;” this is due to mechanical injury to the record
surface, due tcy handling. Dirty mold, another defect, ■ would
ordinarily, be due to the composition, but in these experiments it
was thought best to havfe the mold cleaned wherever, they showed
any smeary’ appearance, as this could be done readily with any
composition. Another defect is “surface scratches,” which is
due to withdrawing the record from the mold and may occur with
any composition. ,
Q. 66. Suppose these records had not been rejected because of
220 complainant’s ruduttal PROOl'S.
these defects, would the result have been substantially different
from that shown in your table?
A. If these defects had been counted it would not have ma¬
terially changed the percentages shown in the table.
Q. 67. Having reference now to this table, and taking up the
first reason for rejection, namely, “Cracked and Broken,” what
connection is there between this matter and tile several composi¬
tions?
A. It indicates brittleness, but of course the records lost from
10 this cause are not due entirely to the composition, as there arc
always from any composition losses from this cause which will
vary considerably, but in the case of ati extremely brittle com¬
position, of course the losses on this account would be very
marked.
Q. 68. What about tbe defect of “Chipped Edges” ?
A. Tbe brittleness of tbe composition would cause chipped
edges to take place more in one case than in another; that is to
say if there were great difference in the brittleness of tbe material,
there might be more chipped edges than would be the case with
20 a softer, tougher material. In this respect also, the handling of
. the records would cause chipped edges without regard to the
composition.
Q. 69. Now please consider the question of “Blow Holes” and
state what bearing, if any, this has upon the composition?
A. “Blow holes” are ordinarily present -in a small degree in
the best compositions obtainable, due to mechanical agitation of
the material, but if tbe composition contains much decomposable
material, so that it was constantly giving off gas, in that case
there would result blow holes in the records, directly due to the
30 composition. In these results, however, while we have counted
the blow holes as a defect due to the composition, yet, their pro¬
portions is in only one case large enough to be attributable to the
composition. With this composition, the temperature was pur¬
posely kept very low in making the composition and possibly
' there were some decomposition products which gave off a little
gas during the molding operation. This is composition C.
■Q. 70. Now take up the next defect, namely “Broken in Hand¬
ling,” and state what, if any, bearing this has on the composition?
, A. The losses in this case were only 2 in composition B, and
4° they were purely accidental and had nothing to do with the com¬
position. They are included here merely to account for the
Q. 7 1. Now consider the final defect, namely “Not round and
Run Out” and state what these expressions mean and what bear¬
ing, if any, they have on the respective compositions?
A. These defects are due to warping and is a properly in¬
herent in the composition. The particular kind of warping, which •
is called "not round” means an eccentric or slightly oval record,
and that which is called “run outs” is an uneven warping which
distorts the record groove and tends to cause the reproducing
stylus to jump from one record groove to another.
Q. 72. As I understand this table then, the two principal
defects which are encountered in molded record compositions to
relate first to warping or irregularities iti shrinkage, and second
to brittleness. Is this correct ? A. Yes.
O. 73. Is it a fact that under commercial operations with the
patented composition only about 32 % of good records are
secured? ‘
A. No, in commercial operations, we get a considerably larger
percentage of good records, but lit order to make comparison, .
which would be as fair to one composition as to another, we put
these through a more rigid inspection as to defects than would
he practiced in commercial work. We put them .through the 20
same sort of inspection which we give our regular composition,
when any change is made therein as to altering percentages. It
is also the same inspection which we make for our molded
masters.
Q. 74. Was the inspection the same with one composition as
with the others?
A. It was exactly the same in each case,
Q. 75. Were the results which you obtained with each of these
compositions substantially what you would have expected to
Obtain from your experience in this art? V>
A. The general trend of the result is substantially what I
would expect, although in the case of composition B the results
were better than I had expected to get. In fact in the earlier
days or stages of the molded record art, we were not able to get
anything like as good a result with the blank composition. The
results that we got in these experiments with the blank composi¬
tion are due to the fact that at the present time the art is so well
known that it becomes possible to mold almost any compositon
with at least some degree of success.
Q. 76. Would it be a fair statement of your opinion based 40
upon your experience in this art, to say that at the present time
when the art has been developed to a high state of perfection,
with the patented composition the percentage of good records
would be at least twice as high as with the blank composition
molded under the same conditions ?
A: Yes, as to the percentage passable if we consider the de¬
fects as noted in the table; but in addition to these defects, the
quality of the records produced by the blank composition was
inferior to that produced in the other or patented composition,
because of a persistent foggy surface which these records made
from the blank composition have, which though it disappeared
on burnishing, left what we call a bad surface, and we would
not use a composition which would give this defect even though
it were perfect in every other respect as to its molding property.
Q. 77. Then, as T understand it, if in addition to the difficul¬
ties which arise in the molding operation, we consider the char¬
acter or quality of the record surface the percentage of good
records which can be molded from the patented composition is
more than twice as great its can be molded from the blank com¬
position under the same circumstances?
A. Yes, that is correct.
Q. 78. It appears from this table which we arc discussing that
so far as concerns the results, which relate to the molding proper¬
ties of the several compositions, there is no substantial difference
between the composition containing the proportion of carnauba,
specified in the patent in suit, or the somewhat smaller proportion
of carnauba used by defendant. Is this correct?
A. Yes, that is correct, there is practically no difference.
Q. 79. Would there be substantially any difference in the
quality or character of the records made from the two composi¬
tions?
//. There would be a slight difference as to the number of
times they could be reproduced without wearing out, but other¬
wise there would be no difference. The patented composition
would b6. somewhat mote durable.
Adjourned to Thursday, February 21st, 1907, at 10.30 A. M.
Okangu, N. J., February 21, 1907. .
Met pursuant to adjournment.
Present — Counsel as before.
CROSS-EXAMINATION, by Mr. Massiii:
Defendant’s counsel enters timely objection to the
statement by complainant’s counsel in questions 38, 39
and 42, as to defendant’s contentions in this case. Com¬
plainant’s statements may, or may not, be correct.
xQ. 80. Does the presence in the metallic soap composition,
for instance, your “hard regular,” of the wax-like compound
, ether obtained from carnauba wax, render the composition more
limpid?
A. Interpreting the word “limpidity” as meaning more mobile
or fluid, tbe addition of the carnauba wax and waxlike ether con¬
tained therein and produced by reactions that take place during
the making of the wax composition does increase the limpidity to
a perceptible extent; that is to say, perceptible not to the eye
direct, but by the aid of physical instruments, such as a viscousity
xQ. 81. Your answer is not quite responsive to my question.
If you add carnauba to what you have been calling your “blank
composition,” but do not employ the temperature called for by
the patent in suit, am I correct in understanding, first, that in
your opinion the wax-like ethers are not produced; and if I am
correct, would the presence of the thus unmodified carnauba in¬
crease the limpidity ?
A. In my opinion if the carnauba wax is added to the blank
composition and the temperature kept down to about 300°, there
would not be additional wax-like ethers formed, other than those
contained in the carnauba wax. The composition in this case
would be more 'fluid or limpid 'than the blank composition. In
other words, whether the composition was heated during the
manufacture o.f the wax to the high or low temperature would
not materially affect the limpidity or fluidity of the composition.
xQ.'&s. Are you familiar with tile composition set forth in' the
Macdonald patent No. 606,725 of July 5, 1898, and of Macdonald
patent No. 626,709 of June 13th, 1899, which 'have -been offered
in evidence by defendant? .
A. Yes, I am familiar with these patents and recognize them
as the ones involved in the companion suits. I was familiar with
the compositions therein disclosed a long time before' thedates of
the applications for those patents. “
All but the word “yes” objected 'to' as volunteered.
xQ. 83. Have you ever added carnauba wax to "that Mac¬
donald composition, with the temperature called for- by the second
Macdonald patent referred to, and also, with a lower temperature
of about 300° F. ; and if you have done so, what did you observe
with regard to limpidity as compared' to the. limpidity. of the same
composition without any carnauba?
Mr. Dyer— I assume that by ' the expression “Mac¬
donald composition” counsel intends to refer only to the
“composition of the Macdonald patents.” Otherwise,
the expression is believed to he misnomer.
A. I have tried the experiments of adding carnattba tvax to
our blank composition, which is essentially the same as the com¬
position referred to in the Macdonald patent, both heated to a
temperature of about 300° and to a temperature of about 460°,
and the limpidity I believe in either case will be the same. 'But I
have not made accurate limpidity or viscousity tests on these two
compositions for comparison. I have made the limpidity tests on
to the composition containing carnauba heated at the low .tempera¬
ture in comparison to the same composition plus lamp black and
heated to the high temperature, and in this case the limpidity of
the composition containing lamp black was just about the same as
the blank composition containing no carnauba, and the composi¬
tion' containing carnauba and not containing lamp black and
heated at the low temperature was more fluid than either of the
other compositions. The presence of the lamp black reduces the
limpidity to a slight extent so as to jnst about neutralize tile in¬
creased limpidity, due to adding, carnauba.'
xQ. 84. What is the effect, as regards limpidity, of adding
ceresin to a .metallic soap composition, containing no carnauba ?
A. It would have the effect of increasing the limpidity.
xQ. 85. How do you know this and when did you first ascer¬
tain the fact ?
. A. At the time the experiments were being made on tile record
composition. At that time, I did not test them with any form
of a viscosity meter, but just by noting the results of molding the
composition.
xQ. 86, When did you first ascertain from literature or other¬
wise that carnauba wax when molten is more limpid than the
metallic soap composition at the same temperature, and that the
presence of carnauba increases the limpidity?
A.. I do not recall just when I made this observation, except¬
ing- that I do remember that when making the. experiments this
property was recognized by me as being a desirable thing in
compositions.- • -
xQ. 87. Is: it not a -fact that the property of being comparatively
very , limpid, that is, non-viscous, when molten is inherent in car¬
nauba; and: whenever carnauba was melted and cooked with
other less limpid compositions the result of increased limpidity
would always take place?
A. Noy it is not a fact that it could be mixed with any sub¬
stance or composition, and result in increased limpidity; for
JONAS
instance, if carnauba wax is mixed with a composition -contain¬
ing an excess of caustic soda, or other alkali, the alkali would
combine with the carnauba wax and result in a viscid mass; and
if the caustic soda were in a sufficient amount, there might be a
material which could not be used at all without charring. A
composition of this sort might be made in the following manner :
Paraffin or ceresin might have added thereto say — 20% of
stearic acid, and say — 3 times as much caustic soda as would be
necessary to completely saponify the 20% of stearic acid, leaving
therein a large excess of caustic soda ; then if carnauba wax were
added the soda combining with the carnauba would result in a
more viscid composition. Carnauba wax considered alone, or
admixed with materials whereby no combination, such as I have
just illustrated takes place, would naturally result in increased
limpidity, providing the substance with which it was mixed
was in itself more viscid than the carnauba wax.
xQ. 88, How long have, you been familiar with the fact, from
literature or otherwise, that molten carnauba is comparatively
very limpid, and that it mixes readily with wax-like compositions
(metallic soaps or otherwise) provided there be not an excess
of alkali present in the mixture?
A. From literature I have not been aware of these facts; my
personal observations with carnauba wax since the early days of
experimenting with wax-like compositions have taught me that
it was when molten, quite limpid, but as to its being miscible with
all wax-like compositions my earlier experiments have taught
me that it is not miscible with all wax-like compositions. There
are many cases which I can recall where experiments were
actually made where carnauba wax is not miscible with such
wax-like compositions, instances of this being attempts to mix
carnauba with shellac, with certain asphalts, with certain metallic
soaps, such as resinate of magnesia, resinate of lime and many
other substances. The fact that asphalt does not mix with
stearate of soda would lead to a. serious doubt as to whether
carnauba wax would mix with stearate of soda. Asphalt, how¬
ever, -will mix with other true vegetable waxes and some forms of
asphalt will mix with carnauba .wax. T hese things have to be
all determined by experiment.
xQ. 89. Are. resinate of magnesia and resinate of limb fusible?
A. Yes, at quite a high temperature.
xQ. 90. What was the specific gravity of each of the two com¬
positions whose limpidity you compared as stated in answer to
Q. 4, or at least how did they compare as to specific gravity ?
29 NEW
A. Selection of the different ingredients, purifying the same
by washingand by filtration and filtration of the resulting compo¬
sition: Of course if the materials were not pure, the high heat
would eliminate the cause of gas bubbles.
3° xQ. 93. “Selection : of materials” — suppose, the materials had
been absolutely' purified, and the resulting composition has been
properly filtered, and the high heat has been employed, the omis¬
sion of- what ingredient' or ingredients from those entering into
the composition of the patent in ..suit, would result in the presence
of decomposition products ?
A. As I understand your question you mean that if any one
of. the ingredients had been omitted, you would still have a
product free of decomposition products, provided the precau¬
tions noted in my previous answer had been: followed. On this
40 assumption, I answer — yes.
xO. 04. Then, the freedom from decomposition products is due
lgrcdicnt added in the new way” as referred
5 is carnauba wax added to the blank composi-
r a sufficient time to a temperature about 450°
1 reactions, which are evidenced by a copious
ml which reaction begins in the neighborhood
tinues for a considerable time, amounting to
n when the temperature is raised to 460°. If
vere maintained at a somewhat lower degree
or example, at the point where the
very much longer time would b
auction begins to take place,
necessary to complete the
,r Q. 98. The “new way” of adding carnattba, then, is to main-
ain the comparatively high temperature of about 450° until the
banting off has practically ceased?
A. Yes, that is what I mean by tile new way. To make this
nore clear I would state that the old way to make such mixtures
vas to add the ingredient to the blank composition which bad
treviously been foamed off and after a thorough mixture of the
nolten material, which in such experiments usually was done at
t relatively low temperature compared to the temperature used
n foaming off to remove decomposition products. In my ex¬
periments, in adding various substances to this composition, a
temperature from 320 to 350° was generally used. At that tem¬
perature the blank composition was sufficiently fluid, and the sub¬
stances which were mixed therewith were also sufficiently fluid
and there resulted a composition which so far as decomposition
products are concerned was all right for the purposes that the
composition was intended for, and it was only quite accidently
that the reactions which take place at higher temperatures were
noted.
xQ. 99. What ingredient was added to the blank composition
in the “old way” ?
A. Many ingredients were used, among -which were asphalt,
shellac, resins, various gums, and hard wax-like materials, and
also carnattba.
xQ. 100. The “new way” of adding carnauba which consists
of maintaining the. high temperature for a considerable period of
time, results according to your opinion in (1) producing the
comnotmd ethers from the carnauba and the free stearic acid.
views ; and is any other result produced ?
A. Yes. missioning that the temperature is high enough tc
cause the reactions referred. So far as any other results being
effected than those stated in your question, I do not recall any.
xQ. 101. Please assume for the purpose of this question, that
the reaction between carnauba (or any ingredient thereof) and
the free stearic acid, results in so small a product as to be
negligible; then, would not the only results of maintaining the
high temperature referred to be to drive off any deleterious de¬
composition products and to expedite the completion of the
A. If we assume that there are no compound ethers formed
other than those contained in carnauba, or in other words, that
there is no reaction or a purely negligible reaction between the '
carnauba wax and the free stearic acid of the composition, the
physical properties of the composition as altered by tile tempera¬
ture under this assumption must be due to something else, and the
high heat might cause other reactions which are not known. I,
however, do not admit the correctness of this assumption, even
if it were proved that there was an extremely small reaction and
consequent product of that small reaction. It would still be
reasonable to believe that they might have a relatively great in¬
fluence in the physical properties of- the resulting composition.
A11 example of such small reaction and great physical change due
to the same, is seen in the blank composition, where no carnauba
wax is used. I-Icre we find it necessary to add approximately
1/10 of one per cent, of aluminum, which produces a great effect
in the resulting composition ; namely, the prevention of crystalliz¬
ation. If this minute quantity of aluminum were not added, the
composition would be utterly worthless.
xQ. 102. Do you recall a statement in patent literature that the
continued application of heat changes the physical properties df
the substance known as ozokerite, even when taken by itself,
rendering it tougher? , : V
A. I recall the statement to which you refer, and 1 agree that
with the substance known as ozokerite, which is the crude form
of ceresin, that prolonged heating at a high temperature would
tend to harden or toughen the material, for the reason that crude
form of ceresin, known as ozokerite, is quite variable in its de¬
gree of hardness and toughness, due to oily components, which
230 COMPLAINANT’S RISmjTTAl/PBOOPS.
higher hydrocarbon of ozokerite in a more pure form. On the
contrary, ccresin which is already pure, is not so toughened by
piolonged heat at a high temperature, and as a matter of fart
ceresm 'Which is the highly purified for of ozokerite, if healed to
a high temperature for a considerable time, is comewhat softened
by the.procedure.
•fQ. 103. Will you please make plain what difference, if any,
there is between ‘.‘hardness” and “toughness” in referring to these
phonograph compositions?
1 A. The, term “hardness" and “toughness" in a measure go to¬
gether, but it is possible to. have a hard brittle substance and a
hard lough substance. That is, one substance may he hTrtl as
evidenced by cutting with a knife, which removes a shaving
winch. hangs together., more or less, and another substance may
. 3e'n,r(' a,ul "ot so tough, in which, instance, upon cutting with a
knife, -there 1 would result a powdery shaving. The difference
between purely a hard .substance,, and a hard and tough substance,
can be. noted in' the. composition C, as compared to composition E,
referred to in my previous answer to Q. 60. The difference in
tins respect, between these two compositions is not great, but it
can be noticed by one skilled in examining such compositions, and
is also apparent by wear tests.
,iQ. 104. Comparing two such compositions, where the thread
cut from one remains -integral, while the thread from the other
breaks up, are the two materials- equally, amorphous, or is not the
latter somewhat more crystalline?
.4. No, they, are equally amorphous, I should say, and I at¬
tribute the greater, toughness of one to the formation of some
•reaction product, and not to , heat alone, because I had treated
the blank composition at .both the high and low tempei-atures,
and. have, not noticed any, increase of toughness, in this composi-
tion, due to heating to the high -temperature.
-V0.- 105. In a recent answer you adduce the comparison be¬
tween composition “C” and composition “Ei” as showing that
, the datter, is tougher; does a similar comparison between com¬
position “D” and composition “E” show that-the latter is tougher,
■ as. indicated by the fewer number of broken records?
A.. I do not consider that the number of, broken records would
be. an accurate indication of the difference in toughness between
the compositions “D” and “E,” unless the collective results of
handling many thousand! records, by the same operators of-each
composition could be compared. The cracked and broken rec¬
ords, are the- result • of' accident in handling, as .well as .brittleness
.vQ. 108. Is it, your, belief, however, that the composition
the, .patent in suit as tougher than. the blank, composition,., thou
not >so tough, as the composition of the patent, when the te
perature does not exceed 300°F.?
A:, It is- my belief- that the composition oftlie .patent, in suit
both tougher and harder,, than, the blank composition, but, that
is not- so hard, though tougher, than the composition “C,” whi
hitter composition was- foamedat a .low temperature.,
.rQ. 109. Whati, tests have, you .made- as to the comparati
toughness and as, to the comparative hardness of -compositi
“C” and composition “E”?
At As to hardness, I have submitted the composition ‘‘I
and composition, “E” to . a needle test;, As to toughness, t
wear tests 011 these two, compositions show -more -toughness
“E” than in„“G.”
.vQ: IIO; That! one sound record will- endure longer unci
the wear test than, another is- due to its greater toughness; rath
232
COMPLAINANT'S RlillUTTAI,
A. I know it to be a fact that both toughness and hardness
combined give the. best wear.
xQ. in. Have yon ever attempted to use the composition dis¬
closed in tbe Petit U. S. patent No. 683,979 referred to in your
direct examination ; or if not, have you any information as to the
behavior of such composition other than gained from that patent
itself?
A. This patent refers to molding by pressure and while I am
familiar with some of the materials mentioned in this patent
10 mixed with the molten blank composition l have never attempted
to incorporate them all in a molten composition, such as the
patent in suit. 1 am, however, familiar with the properties of
the ingredients mentioned.
-r Q. 1 12. 1 show you copy of U. S. Letters Patent No. 787,001
to Sanders, dated April n, 1905. This patent names as one of
the ingredients of the composition for sound records “natural
oxide of iron.” Is that material in your opinion gritty ; and what
can you say as to the quality of a record made of the materials
set forth in this Sanders patent?
so A. There are many forms of natural oxides of iron; it is my
belief that they all of them contain gritty substances, and that a
record produced from such a composition would be rough and
noisy compared to a record produced with the patent composition
of tlie patent in suit.
. xQ. 113. You observe, do you not, that this composition of
the Sanders patent is indicated as being for disk records, which
arc made by impressing, as you just now observed that the
record of the Petit patent 683,979 was made by pressure?
A. Yes, I observed that this patent refers to disk records
30 formed by pressure. It is possible, however, that a mixture of
tlie natural iron oxide when pressed into the record surface might
be smoother than if the same oxide of iron were incorporated
in a molten mixture, such as the patent in suit. ,
■' xQ. 1 14. Is it a fact, speaking generally, that the presence of
gritty substances, or relatively gritty substances, like chalk or
fine precipitates, in a record composition that- is to be used for
casting records (as distinguished from applying pressure) does
not give good results and is undesirable.
A. If the substance is not sufficiently fine, so that there would
4° result gritty particles in the composition, I think it would be
undesirable, but if the precipitate is extremely fine like lamp
black, or certain forms of precipitated iron oxide, or chalk,
it would be desirable providing they would not separate out, due
to their greater specific gravity. In case of lamp black, while it
is of higher specific gravity than the wax. composition it is so
extremely fine that it does not separate out and is not undesir¬
able.
.rjp. 1 15. Would a person skilled in this art be liable to em¬
ploy in a composition to be used for casting sound records a
substance that is manifestly gritty or relatively coarse in its
particles ?
A. A person skilled in this art might experiment with such
substances, with a composition capable of being cast but I don’t
believe they would find the results sufficient to warrant the use
of such composition.
xQ. 1 16. If a person skilled in this art had your ordinary
blank composition and wished merely to harden it, andif he had
before him two ingredients each of which would harden the
composition and was apparently miscible therewith, one of which
was relatively coarse or gritty, while the other was not; to which
do youi think lie would naturally first turn?
A. If the relatively coarse and gritty substance were mis¬
cible, that is, soluble in the composition, I think he would be
pretty apt to experiment on both of them before deciding.
x Q. 1 17. Which do you think a person of ordinary intelli¬
gence would attempt first ?
A. If he had knowledge that the gritty coarse particles would
remain as such after mixing them, lie would most probably try
the others first.
Answer objected to as not responsive.
x Q. 1 18. Will you please specify which method you employed
in molding the records from compositions "B,” “C,” “D” and
"E” ? -
A. In all of these compositions the process described in the
patent in suit. I have reference to the Miller and Aylsworth
patent. described in the patent in isuit, •
xQ. 1 19. You refer to Miller & Aylsworth patent No. 683,615
dated October 1, 1901, 'in which tlie mold is dipped into a .vessel
containing the molten composition. Is the mold heated, or at
normal temperature at the instant it is dipped into tlie molten
composition?
A. The mold is somewhat warmer than the normal tempera¬
ture at the instant of dipping.
xQ. r 20. l am not asking as to what the patents describe, but
inquire about what actually took place when making the records
complainant’s rebuttal prooes.
“E.”
Was the mold
the molten material long enough to acquire
anywhere near the temperature, of that material?
A. 1 he mold was left in the molten material two minutes,
during which time it does attain somewhere near the temperature
of the molten material.
.10. I3i. The particles of the molten material that first come
in contact with the surface of the mold meet a surface that is
comparatively cold, do they not?
o /L That is correct, compared to the temperature of the molten
material.
• V^i<I2>T'„Hf,VC y0U nlatle any comparative tests of composi¬
tions “B,” "C,” “D” and “E” by molding records in a mold that
was either previous to heating to about the same temperature as
j molten composition, or that was subsequently brought to
about the same temperature while the composition remained in
the mold?
A. I have not, but it is my belief that the results would be
essentially the same however they were molded, providing each
o composition received exactly the same treatriient.
Adjourned until Friday morning, February 22d, 1007 at
10.30 A. M.
URANG8, N. J., February 25, 1007.
Met pursuant to adjournment.
Present— Counsel as before.
CROSS-EXAMINATION of Mr. AYLSWORTH con--
30 tinued.
■rQ. 123. In answer to question 8, you speak of the property
of the composition containing carnauba, namely that after being
cast, it does not shrink perceptibly until it is solid and compara¬
tively cooled, etc. Is this a property of carnauba when existing
alone, as well as of the composition containing carnauba? :
A. The carnauba alone would be impossible to cast success¬
fully into a record, on accpunt of .its excessive contraction and
warping. Carnauba wax when solidifying, shrinks to such a
large extent that fissures and cracks are formed in all directions.
4 Especially is this true when it is suddenly solidified. . I would
expect that a mixture of carnauba wax and the blank composition
if the carnauba is used in considerable percentage, would develop
extraordinary properties of shrinkage and that such mixture
JONAS W. AYLSWORTII. 235
might develop unfavorably for the purpose of casting the records.
But, however, in experimenting it was found that the combina¬
tion of carnauba and the blank mixture gave a most favorable
result, and did not exhibit any of the extreme properties- of shrink¬
age, which are inherent in the carnauba wax alone.
.rQ. 124. You evidently misunderstand my question and per¬
haps 1 have misunderstood your direct deposition. Am I correct
in saying that in casting records from the composition of the
patent in suit, the molten composition does not contract at a
uniform rate continuously from the very moment heat is re- io
moved to the end ; but remains in contact with the mold until it
has become comparatively cool and solid, and thereafter shrinks
radially sufficiently to clear the matrix-surface?
A. What takes place in casting a record from the composition
of the patent in suit is as follows:
The molten material is chilled and solidifies on the surface of
the mold, which is accomplished by cither dipping the mold
maintained at a relatively lower temperature than the composi¬
tion, or by filling the mold with the molten composition and
allowing the mold to come to the temperature of the composition,, 20
and then subsequently performing the congealing operation, by
the application of cooling agents to the exterior of the mold, in
both cases there results a solidified layer of the composition on
the inner surface of the mold, which remains in contact with the
mold and does not shrink therefrom until the solidity reaches a
certain stage. Shrinkage, however, does take place from the
time the wax first begins to solidify, but such shrinkage does
not result in the shrinkage of the solidified material from the
mold, but such shrinkage takes place in other directions. In
the case of the dipped record before mentioned, this shrinkage ,‘0
takes place from the hot and more plastic inner surface of the *
cylinder toward the mold, that is, radially outwards. And, in
the case of casting the record, whereby the mold is filled with the
molten material, the first shrinkage takes place also from the
inner surface of the cylinder radially towards the mold: Then,
in both cases, when the inner part has solidified to such a poipt
that it tends to resist its ..radial' outward shrinkage, the record
begins to shrink away from the mold.
.vQ.125. That is very clear to me now, and it applies to the
composition of the patent in suit, which contains carnauba. Now, ,|o
disregarding the character of the mold, and disregarding whether
or not you will get a good sound record from carnauba, without
any other materials added, will molten carnauba by itself behave
-3<5 complainant's rebuttal proofs.
the same way after shrinkage if treated by either of the two
methods you have just set out?
A. I do not think that carnauba by itself will follow the exact
phenomena of shrinkage which the blank composition and the
patent in suit displays. As I stated before, I have always found
it impossible to cast a record of the pure carnauba and unless that
were done, it would he impossible to state just what would take
place.
■rQ. 126. If the blank- composition by which I understand you
10 to mean the composition of the patent in suit minus the carnauba
and lamp black, be treated in cither of the two manners set out in
your answer to .rQ. 124, will it behave the same way as the com¬
position of the patent in suit, as regards its shrinkage?
A. I he blank composition in its phenomena of shrinkage is
similar to the composition of the patent in suit. By shrinkage, I
mean shrinkage from the mold in casting or molding records.
But there are slight differences in this, which as I have before
testified, result in quite marked differences as to the surfac of the
product. This I attribute to the fact that the composition of the
30 patent in suit remains in contact with the mold longer, so that
when it does shrink from the mold it is cooler and somewhat
more coherent, which results in a cleaner molded surface.
■rQ. 127. Why does the composition of the patent in suit re¬
main in contact with the mold longer than the blank composition?
/f. Just exactly why the composition of the patent in suit
remains in contact with the mold longer, there is no absolute
proof, but I attribute the phenomena as being connected in some
way with the formation of the esters that result from the re¬
actions of the carnauba with the wax composition:
30 -rQ. 128. So far as you know, is there any. wax composition to
which a substantial amount (say 15%) of carnauba wax can be
added, where the resulting composition will not preseitt the same
• phenomena with regard to shrinkage as with the case of the
patented composition? And, I am asking about the shrinkage
only and not about the resultant sound record or other article.
A. Yes, there are many such compositions that -will result in
differences in shrinkage; for instance, a composition of stearate
of lead, which is a wax-like material, when mixed with carnauba
has the property of such excessive shrinkage that it leaves die
40 mold before the finishing operation can be performed and before
the major part of the shrinkage has taken place. A mixture of
carnauba, wax and asphalt, on the other hand, leaves the mold
much slower, and in fact it is very difficult to remove a record
JONAS W. AYLSWORTM. 237
cast with carnauba and asphalt in the proportions mentioned in
your question. In the first case, which I cited, there is so much
shrinkage takes place after the record leaves the mold that the
ii.ulcntations become very much blurred or rendered less sharp
than those of the matrix.
.rQ. 129. In .rQ. 124, you name two methods of casting rec¬
ords, of which I understand the first to be that practiced by you
in. making the records from compositions “B,” “C,” “D” and
‘‘E” as set up in vour direct deposition, is ’the second method-
named by you in xQ. 124, substantially that disclosed in De- I0
fendant’s Exhibits “Macdonald Reissue patents 12,095 and
12,096” of March 10, 1903?
A. Yes, the method used in casting these compositions was
the same as described in the first part of my answer to .rQ. 124,
and the second method described is similar to the method dis¬
closed in Macdonald patent No. 12095 reissue; in both cases,
however, the results as to shrinkage take place in the same
manner; that is to say, as far as the casting of the record is
- concerned the shrinkage must take place in the same manner.
.rQ. 130. The Macdonald- reissue patent No. 12095 aforesaid, 20
about line 77, of page 1, directs the application of cold wateit
to the outside of the matrix. If the matrix contains your ordi¬
nary blank composition; or what I term the “Macdonald; com¬
position,” what effect would this external-application of cold water
have upon the outer surface or rather upon the particles of the
molten composition that arc in contact and those immediately
adjacent to the matrix-surface?
A. The application of cold water as you have described in
your question would tend to produce a more amorphous layer of
the same composition. 30
•rQ; 131. What effect would this applicaton of cold water upon
the exterior convex surface have upon the consistency of that
portion of the molten composition that is1 adjacent to the niatrix-
. surface, that is as regards fluidity or. becoming solid- etc.?’
A. The application of cold water, as you have described in
the question would result in solidifying the molten material; onto
the surface of the mold, and such solidification would proceed
throughout the mass of the material/ ;
.rQ. 132. Would the mass of the material, that ds the portion
located nearest the axis as distinguished from the portion of the 40
blank composition that is adjacent to the matrix-surface, would
that mass meantime be contracting or shrinking radially out¬
ward towards the portion already solidified by the application of
the cold water?
wherein it is very plastic. ‘ ‘feU’
AQ‘ 1 33- If instead of adding earnauba to your blank coni-
position to obtain the specific composition set out in your patent
you should add Bees’ wax, would the resulting composition, if
cast, by the dripping process, as described by you, behave in the
same manner as to shrinkage as the earnauba composition ?
A. I he shrinkage phenomena would be similar, but, of course,
i in the case of bees’ wax the proportions would have to be smaller
than m the case of earnauba to get relatively similar results in
the composition.
■lQ. 134’ Why would you have to use less bees’ wax to get re¬
latively similar results in the composition ?
A. Bees’ wax toughens the composition, but if added in as
large a percentage as the earnauba, I think on account of its
more sticky nature it would be not so satisfactory.
■'Q- 135- It seems then that if we employ bees’ wax instead of
cainauba in the patented composition, we have to take less bees'
wax. What effect would this smaller amount of bees’ wax have
upon the composition with regard to limpidity, smoothness of
textuie and brilliancy of surface and hardness?
A. It would have all of the desirable effects of the earnauba.
*U, 136. Would tins smaller amount of bees’ wax render the
blank composition harder?
A. It would render the blank composition harder in the sense
Smff thecbeL V be“C “ ' 11 U C bI k composition
wifiis-kttt 4.1, 1 > an tllc blank composition
tho t the bee ax The, high price of bees’ wax, however,
has rendered it unnecessary for us to go into the merits of this
substance very extensively,
f A P° you regar(l bees’ wax as a hardening ingredient
d n thel stcivenlP0S'ti0,,; “'V* *°’ did you "ot
in me list given in answer to Q. 39?
. A- I„regard ,bees’ wax as a hardening substance if used
S’ rrcs’ "■ that 11 tol,ghens t,le material, so as to
produce a better wearing surface. It is, however, in itself not a
hard. substance in comparison with earnauba wax. As to why
I ces wax was not mentioned, in the list you refer to that list
: oes not attempt to include all of such substances,. and bees’ wax
his "h, t ' SUbstiU1CeS tl,at 1,as becn overlooked in making out
*Q. 138. In answering Q.16, you state that the foggy. appear-
lnCe °r rollffl'ness, which you observe as characterise of the
present in the records dipped from your patented composition
("E”) in a few instances only. How do you account for this
roughness or fogginess in those few instances where you em¬
ployed the patented earnauba composition and the dipping pro-
A. They might have been due to the molds not being perfectly
clean,' and I think that explanation accounts for it, because in
our regular manufacture of this composition, there is very seldom
any of this foggy effect.
xQ. 139. Your explanation is a conjecture, is if not?
A. The explanation is founded on observation, but' as regards
this particular instance, I did not investigate it so as to determine
with exactness that such was the case. :
xQ. 140. You have explained the absence of fogginess' in the
records dipped from the earnauba composition, by stating that
the material does not leave the matrix-surface until it has already
become solid and set, so that it retains a sharper and more faith¬
ful impression. In answer to xQs. 131-132, you say that if we
employ your blank composition and apply cold water to the ex¬
terior of the mold, the composition in that case will become solidi¬
fied onto the surface of the mold, and the mass of the composition
would in the meantime continue to shrink radially towards the
surface of the mold, after it had solidified in the first stages!
And, in answer to Q. 6, you have said that the surface of the
ordinary blank composition is “very smooth.” Are all these
statements true and correctly stated by me; and if so, could
you not obtain from the ordinary blank composition by applying
cold water to the exterior of the cylinder, sound records whose
surface would be free' from cloudiness and fogginess?
A. I have not practiced the exact method which would be in¬
volved in your question of subjecting the mold to cold water,
but it is my opinion that if such procedure did accomplish the
result of making the surface free from fogginess and a perfectly
smooth surface, that the application of such excessive cooliiig
would result in stresses in the record which would cause excessive
warpage and possibly breakage.
Mr. Massic — All after “cold water” objected do as
incompetent and as volunteered. -d ■
xQ. 14 1. By “runout,” one of the headings' in your table in
answer to Q. 60, do you mean that the record groove itself has
not been retained in the cylinder; or do you mean something
else, and if the latter, what?
A. Not exactly; the effect would be more that ot having on
one part of the record, say ioo threads to the inch, and on an¬
other part of the record, say 99 threads to the inch, also various
distortions, such as .might be illustrated by the.grain in a piece of
wood.
xQ. 143. IIow many of the 56 records noted at the end of Q.
60 as being “Not Round and Run Out” were run out only, flow
many were “not round” only, and how many were subject to both
conditions?
A. It is my recollection that they were approximately equal,
although, in .many cases both .defects were noticed in the same
record. These defects are so co-related that they were put under
one .heading, but if desired the number due to each effect can be
produced.
xQ. 144. If you ;can do, I would like the figures; and also the
corresponding ■ figures for the 23 of Formula “C,” the 35 of
Formula “D” and the 40 of Formula “E,” that were observed to
be “Not round and run out”? ,
A. I will .produce these at the next session.
xQ. 145. Is the fact that more or less specimens from each of
the four compositions were “cracked and broken,” or had
“Chipped Edges,” or were “Broken ;in Handling" indicative of
any difference in the limpidity .of the respective compositions
when molten?
A. No, these defects are more indicative of the brittleness of
the composition, but as I have before testified those figures do
not represent with; mathematical exactness the brittleness of the
composition, because in operations of this kind the product is
1 handled during the various stages by different operators, ,but
they are a yery fair indication of brittleness, and .if many thou¬
sand were made, whereby the human element would ,be averaged
so as to become negligible, it would indicate with .almost mathe-
otlicr. As to the latter part of your question regarding the sur¬
face, these results would indicate nothing as to the surface of the
material.
.1-0. 148. That is, the figures enquired of in .rQ. 145, do not in¬
dicate that the records from one material are more free from
fogginess than those from any other?
A. As I have stated in my previous answer, the surface of the
material would have no effect on the number of records "Cracked
and Broken” or “Chipped Edges.”
xQ. 149. Do the facts referred to in xQ. 145 give any indica¬
tion that one material is more hygroscopic than the other?
A. The facts referred to have no bearing on the hygroscopic
nature of the material.
xQ. 150. The figures under the headings referred to are to
be attributed solely to the personal equation of the various work¬
men handling the article, and to the relative toughness and brit¬
tleness of the respective compositions ?
A. The figures given in those columns, I should say repre¬
sented in a large measure the comparative brittleness of the vari¬
ous compositions, but that on account of the human error they
do not indicate this with mathematical certainty; that is to say,
one composition might have a few more records broken acci¬
dentally in handling than would affect the results slightly.
xQ. IS1- Of the 93 records dipped from composition “B,” 18
were subject to the objections enquired of in xQ. 145. How
broken in handling, but as to the number in this composition and
in the other compositions aside from these two mentioned that
were broken, due to accident or handling, no record of the break¬
age due to handling as distinguished from that due to the brit¬
tleness of the composition was kept. The operators, however,
who did the work on these records handled them all very care¬
fully and the percentage due to accidental causes was in each case
extremely small.
,i -Q. 152. I notice of the 93 records of Composition “B,” 16
whose defects were not due exclusively and explicitly to careless
handling, that is about 17% were cracked and broken or chipped;
and in the same way there were 14 of the S6 records of composi¬
tion “E,” or 16% about. Would you assume from this, that
composition “B" was about of the same toughness or non-brit-
tleness as composition “E”?
A. While I have not figured the percentages indicated in your
question, they appear to be about right and as to the brittleness
would indicate that the composition “B” and composition “E”
were about equal in this respect.
xQ. 153. Composition “D,” which you have taken as being
substantially defendant’s composition, shows 26 losses out of 93
records, or about 27% (as against 16% and 17% for “B” and
“E”), although composition “D” contains both ceresin and car-
nauba in substantial quantities. Do you conclude from this that
the toughness or non-brittleness of the patented composition is
to the same quality of defendant’s composition as- 27% is to
16% ?
Adjourned to Tuesday, February 26th, at 10 A. M.
ORAttcu, N. J., Feb. 26, 1907. •
Met pursuant to adjournment.
Present — Counsel as before.
CROSS-EXAMINATION of Mr. AYLSWORTI-I continued.
By Mr. Dyer — Counsel for defendant is informed that
the matter called for in xQ. 143 and xQ. 144 will be
produced in connection with the depositions of other
witnesses bv whom the figures and calculations were
JONAS W. AYLSWORTH, 243
By Mr. Massie — Am I correct in understanding that
all the figures given in the table in the answer to Q. 6c
were given to the witness by other parties, and so fai
as this witness is concerned is secondary evidence.
By Mr. Dyer — Counsel for complainant suggests tha
the information can be obtained. from the witness, rathei
than from counsel.
xQ. 154. 1 call your attention to the table appearing at the en<
if your answer to Q. 60. Please indicate which of these figure
ire given of your own knowledge and are not merely report:
jiven to you by the various inspectors?
A. The figures given in this table were taken from the in
ipectors’ reports, who inspected these records without any in
itructions as to what they were, but were told to give them th
regular inspection, such as they give the regular work in thei
•espectivc departments. These inspectors are skilled in this lin
af work and follow it daily. I personally witnessed the inspect™
as regards the first four columns, but those of the fifth columr
namely “not round and rim out,” which were done in Mr. Payne’
Department were not personally witnessed by me. I will her
state, however, that the items of this column arc usually inspcctc
by Mr. Sturms, though not so strict an inspection is practiced i
his department and since we had decided to give these records th
final master inspection, the matter of “not round and run out
was omitted in Mr. Sturms’ inspection. The results of the fin
inspection were gone over very carefully by Mr. Holden and mj
self; that is. we examined the discarded records to see the defect:
I also examined some of the discarded records under thccolum
of “not round and run out” and satisfied myself with the corrcc
ness of the inspection.
xQ. 155. Will you please answer xQ. 153, which- is now show
A. In regard to this comparison which you have stated i
xQ. 153, the apparently abnormal percentages shown betwee
compositions “D” and “E,” I should say were not altogether :
this instance due to the brittleness of the composition, hut rath
accidental. The results of the figures, however, taken as a who
comparatively are additional proof to me of the properties 1
these compositions which 1 know from long experience differ
their physical properties as to brittleness; that is, from other c:
periments which I have made in the past and physical tests
which I have subjected these compositions, that these figures a
,11 nmmumt with each other as to the differences ill these cot
xQ. !5<5. 1 understand from your answer to xQ. 154 that the
results of the first four columns were gone over very carefully
by you, to the extent that you examined the discarded records to
see the defects. Did you likewise examine all of the records of
the four compositions that were not discarded in order to see
whether any of those might show defects?
A. Yes, I looked over the finished or perfect records as well
as the discards, and the further correctness of tile inspection was
checked by the second or final inspection in Mr. Payne’s depart-
xQ, 1 57. Did you take part in that second or final inspection ?
A. I examined some of the records to satisfy myself of the cor¬
rectness of the inspection, but did not take part in the actual in¬
spection.
Reference to the second inspection is objected to as
hearsay and incompetent.
Reserving for the present the right to object to tbe
table in question as being secondary evidence until after
tbe inspectors have testified, defendant's counsel now
objects to the said table as untrustworthy and mislead¬
ing, because it does not appear what number of dis¬
carded records of each kind were defective on account
of causes not inherent in the compositions.
Pending the introduction of the figures distinguishing
between “Run out and not round;" defendant’s counsel
will have, to withhold further examination on the tests
made by this witness.
xQ. 158. Will you please describe what you did in making the
limpidity tests referred to in answer to Q. 4, telling 11s for in¬
stance, which composition you. tested first, how you made the
observations, how long it took in. each case, size and dimensions
of the funnel, etc. ?
A. I do not have the figurqs for the size of the funnel which
you call for in your question, but will produce the funnel which
1 used for your examination. What was done was the following:
About 8 lbs. were melted in a pot by the aid of a gas burner
having very careful regulation, so that the temperatures could be
maintained at the desired point. The experiments were made .
jointly by Mr. I-Iolden and myself; Mr. Holden doing the timing
by a watch, and I called the time of starting and time of finishing
in each instance. In doing this the funnel was first submerged
in the molten composition sufficient time for it to become heated
to the temperature of the composition, then lifted out quickly and
JONAS W. AVCSWORTH. ' 24S
emptied by inverting, and then placed so it would float on. the
composition, and the exact instant when it floated was called off
to Mr. Holden, and the exact instant when the funnel disappeared
below the surface was called off to Mr. Holden. The composition
first tested was composition “D.” These experiments were made
with these compositions at two temperatures ; that is, a temper¬
ature not far above its melting point, and at a temperature con¬
siderably higher than the melting point, so as to get the fluidity
at different temperatures.
•rO. 159. The tables of this test which you have just handed n
me showing the different temperatures and elapsed times, from
which you have taken the averages, show do they not, that there
is no absolute relation, in specific instances, between the tem¬
perature and the time required for the funnel to sink; that is,
for instance, with the first three tests with composition “D,” at
the same temperature you 'get three different time periods, 1
minute and 9 seconds, 1 minute and 24 seconds, and 1 minute
and II seconds respectively,— though all, were at supposedly the
same temperature?
A. In making determinations of this kind, it is not like work- 2(
ing with an instrument of precision, such as a micrometer, and
there are, of course, small differences in the results, to overcome
the effect of which a sufficiently large number were tried to strike
a fair average. Tile results arc on a whole more concordant and
exact than I believed was possible. The average results I consider
to be absolutely accurate critcrions of the fluidity of the composi¬
tions at the average temperature of the experiments in each case.
It was my intention to make these experiments more extended
before these tables were introduced. The results are, of course,
comparable with each other, but I expected to make a further test v
with the same apparatus with other fluid so as to further compare
the fluidity of these compositions with, for instance, water as a
standard. ■
xQ. 160. There has been some discussion1 as to whether it is
toughness or hardness or both, that causes the cast records to
wear longer ; and there is some question also.as to whether or not
the continuing high temperature produces a chemical reaction;
•and concerning the effect of the continued high temperature in '
eliminating deleterious decomposition products. But you agree
with us, do you. not, that whatever names be given and whatever 40
scientific explanation is offered, if a substantial amount (say
15%) of carnauba wax be added to your ordinary blank composi¬
tion (which we called “the Macdonald GomnOsitiOn” I and; a
A. If the compositions are made with materials that are sc-
30 lected with the utmost care, I would consider that the composi¬
tions would be free from deleterious substances hut. whether they
are free from deleterious substances or not would have very little
effect on the wear of these two compositions ; that is, in every
case in which I have experimented with the carnauba composition
in comparison with the blank composition, the wearing of the
composition containing the carnauba has shown up very much
more favorably, no matter whether it was a rough experiment
' wherein the materials were not particularly selected as to freedom-
from deleterious substances, or not.
40 xQ. 162. Is your answer to xQ. 161 “Yes;” do you answer the
question in the affirmative?
A. I think your question calls for an explanatory answer, such
as I have already given, and could not be answered by simply yes
xQ. 165. Then, for all practical purposes and speaking -prac¬
tically, your answer to xQ. 163 is in the affirmative?
A. In the practical sense, I think that is correct.
xQ. 166. Second, would records molded from the composition 30
made of tiie materials and in the manner stated in the xQs. 1 Go-
164, be more durable under the wear tests, than the records made
from the ordinai’y blank compositiqn? Can you answer this
question yes or no?
A. If I understand your question correctly you ask whether or
not the composition containing carnauba wax and heated to a
temperature of 450° for four or Rye hours, in other words, the
composition of the patent in suit, is more durable as to wear, tests
than the blank composition. My answer to this under the above
interpretation of the question is most positively, yes. ■ .40
xQ. 167. You have correctly understood the 'question. I will
now combine the two inquiries as in xQ. 160: If you take the
materials indicated in x Qs. 166- 164, and treat them as indicated
original question ( xQ . too) is neutral as to such as-
Q. 168. If instead of saying that the high temperature is
ntained for four or five hours, we make the question more
:ific and say that the high temperature is maintained until all
ning off or frothing of the carnauba composition has ceased,
1 can you answer xQ. 167 in the affirmative?
I. Your amended question, substitutes a part of the evidence
•caction and is otherwise the same as the first question, and
sequently my answer would he the same, that is, yes.
Q. 169. Is complainant’s exhibit, Early Columbia Molded
ord, one whose record-groove has “run out’’ as that term
been used by you ?
I. I have not examined the particular record of which you ,
tk, as to bow much of the record-groove is run out, but I can
! soon determine this point by trying this record on a phono-
1I1.
Q. 170. I understand your testimony to be that this particular
ird is “not round.” Will yon please be good enough to test .
exhibit on a phonograph and report whether dr not its rci
I-groove is “run out.”
At this point a recess was taken for the purpose of
enabling the witness to make a test of the record in
the presence of counsel for both parties, as requested in
the preceding question. The witness continues his an¬
swer to the question,
'.'Upon testing this record in the presence of counsel, T find
to be a most characteristic example of both “out of round”
“run out.” Such a record as this one would be of no cont¬
end value at the present day.
Q. 171. Do 1 understand that the various records noted in
r table at the close of your answer to Q. 60 as being not round
run out, were as an average no more so than this particular •
rd, “Complainant’s Exhibit,’ Early Columbia Molded .Re¬
damaged surface, but whether it is due to hygroscopicity or not,
I cannot state off-hand. This record has been kept in a carton
box, which would of course protect it from damage due to hygro¬
scopicity, even if it were prone to such an effect.
•I'Q. 173. Do you observe on this same exhibit any other indi¬
cation of any break-down of the material, elfiourescence, moldi¬
ness, or similar injury ?
A. I observe whitish streaks in the record-groove, which has
the appearance of an imperfectly molded surface, but not that of
moldiness or hygroscopicity.
xQ. 174. These “whitish streaks in the record-groove” I do
not seem able to detect with my eyes; they’ are not very con¬
spicuous, are they?
A. When held in the sunlight at the right angle they are quite
conspicuous.
xQ. 175. Was this record played, that is reproduced, through-
• out, from end to end, in the test made just after x Q. 170?
A. It was, but I noticed this same appearance before the test
was made. In fact, playing a record over would not make the
effect noted. In a wear test a breaking-down of the record is
noticed, but it gives a different appearance from this.
xQ. 176. In listening to the reproduction of this exhibit record
just now, did you observe whether, or not the machine failed to
reproduce the selection, or at any portion of the selection?
A. I did not notice that the machine failed to reproduce the
record, but I did notice that die reproduction was very imperfect
and rough. Such a record would find very few customers today;
that is to say, in the present state of the phonograph art.
xQ. 1 77. .What do you mean by “imperfect and rough?”
A. I mean by "rough,” a comparatively rough surface which
produces foreign noises, which do not form a part of the sound
record. By “imperfect,” I mean the wobbly or jerky sound, due
to the irregular or noil-concentric cylinder, which is undoubtedly
.r Q. 180. Was the test following xQ. 170, matte on a legmni
phonograph ?
A. It was made on a regular phonograph supplied with a reg¬
ular reproducer, supported not by the regular arm, hut so ar¬
ranged that the reproducer could move and adapt itself to witle
eccentricities and indicate the same by a pointer fastened thereto.
This instrument is what we call our regular thread testing instru-
:o ment, and while indicating defects due to shrinkage, it also re¬
produces the record in the same manner as the regular phono-'
graph.
x-Q, 181. What sort of a horn did you use?
A. There was no horn used in this test, the defects were sufli-
cinetly marked to he audible without the magnifying aid of a
horn.
.1-Q.182. The "pointer” fastened to the reproducer was some
six or eight inches long, was it not?
A. The pointer was about six inches long and made of a very
50 light strip of bamboo, and being flexible it docs not move as a
whole with each sound vibration, but only indicates the large ir¬
regularities, amounting to a large fraction of the circumference
of the record-groove. This instrument exerts such light pressure
on the record that master records from which molds are made
can be tested on it without injury to the same. By “master rec¬
ords” I mean molded masters, from which additional molds are
made. .
xQ. 183. Docs the moving or the mere flexing of this pointer
lend to any extent to “dampen” or retard the movements of the
40 reproducing-stylus?
A. It may have some slight dampening effect.
xQ. 184. What effect would this dampening effect have upon
the audible reproduction ?
lack of.complaints with the composition containing carnanba. In
other words, we have had no complaints from this cause since
using this composition. I should, however, after due considera¬
tion of my recollection of what was done in the early stages
of the manufacture of the molded records and the carnanba
composition conclude that the carnanba ingredient was chiefly
contributory to this effect, because in the earlier records that were
put on the market, the lamp black ingredient was not used. The
material in this case was colored black by crude ozokerite.
xQ. 187. If your conclusion be correct would it not follow
that whenever carnanba is combined with these wax-like phon¬
ograph compositions, it imparts more or less of its antiseptic
properties?
A. Yes, 1 would conclude that it would contribute these effects,
but not having tried it specifically, of course, 1 could not make a
positive answer. Of course, the materials or compositions, which
were put on the market were those made according to the patent
in suit, and the properties noted might be contributed by the
reactions which take place in making a composition.
. xQ. 188. So that if it should' prove to be the fact that no re¬
actions take place to any appreciable degree in making the com¬
position of the patent in suit, your present conclusions are to that
extent to be thrown out?
A. If such a condition were proved I would, of course, alter
my conclusion on this particular question of antiseptic properties.
.rQ.189. In one of the companion, suits, 011 Macdonald patent
No. 606,725, 1 think, in which the Graphophone Company is com¬
plainant, my recollection is that in testifying about records made
from the composition which you are now terming your record
blank composition, you stated that in the beginning, there were
A. No, that is not exactly right, Ihe mildew effects would
take place with those earlier compositions if such compositions
were exposed to the germs and influences and surroundings
which cause mildew to develop. Many records made from those
compositions and without any special effort to protect them were
kept for a long period of time without developing the mildew
effect. As a matter of fact this mildew effect was only produced
in certain localities where the temperature conditions and con¬
tributory causes existed.
■VQ ■ 191. Was it evident a priori before you produced your
patented carnauba composition, that sand, sawdust, plaster-of-
Paris etc., if added to your regular blank composition would
render the surface of the composition unduly rough ?
A. It is not at all apparent what the effect of a mixture of such
substance would have in a inolilcd record, without first trying the
experiment. If we were dealing with a blank composition, how¬
ever, it would he very apparent that such admixtures would be
undesirable.
xQ. 192. That is, when you set out to develop your patented
carnauba composition, you did not even have so much as a guess
that the presence of sand in that composition would tend to render
nearly identical in principle and effect, with the methods prac¬
ticed in the Miller and Aylsworth patent named in the patent in
suit, that I believe the same advantages which I have found, this
composition to possess in the latter process, do also take place in
the former process; and furthermore, from the character and
appearance of the records which defendants m this smt first put
upon the market, in which the defects noted in my previous
testimony are apparent, that outside of wearing advantages, the
advantages of molding with a more or less degree of freedom
from undue warpage as compared to the blank composition is
realized by the defendant when using the patented composition
referred to in your question.
Reference to the “effect of the process inquired of
is objected to as incompetent, because the answer states
that the witness has not practiced that process.
.rQ.200. What effect with regard to hardness or toughness
would be produced if you employed stearic acid with your regular
xQ. 203, Am I correct in understanding that your work which
letl up to the developing of your patent carnauba composition
consisted in a regular methodical examination and test of each
and every ingredient and mixture of ingredients that seemed at
all promising, applying to' the same a similar, regular and metho¬
dical manner, all the various processes, (including temperatures)
■ that occurred to you as being promising?
A. I think that my work 'was'. more or less methodical. I was
after certain properties in the composition and did not allow my¬
self to be guided altogether by theory as to the anticipated effects
with the substances and mixtures that the same might produce, but
rather allowed myself to be led by the actual results of experi¬
ments, and I know that in these experiments and in experiment¬
ing generally I frequently try mixtures and experiments which
would seem more or less, absurd, if the certain (i.e. already re¬
cognized) properties of the substances were to be considered as
tion described in the Macdonald patents No. 606,725 and No.
626,709, how much cnrnuuba did you employ; what proportion?
A. I did not experiment with the composition of the Macdonald
patent referred to in your question, but experimented with our
regular blank composition, which is practically identical with the
composition mentioned in the Macdonald patents, and which the
Edison Phonograph Works had placed on the market many years
before the applications for the Macdonald patents were filed. In
these experiments I used our blank composition in combination
with carnauba wax, both at the low temperatures, which it is
usual to mix, and also in the manner disclosed in tlic patent in
suit, in both of which cases, entirely new compositions were
realised, and which had not to the best of my knowledge been
made before. In these experiments the proportion was- essen¬
tially that disclosed in the patent. I, however, experimented with
different proportions and as a result of these experiments con¬
sidered the proportions disclosed in the patents to be most de¬
sirable as to properties of the composition, aside from the matter
of cost of the material.
.rQ.207. El the first part of your answer to Q. 41, you said
it was difficult to mold even a blank from compositions which
contained much carnauba. What ncrccntap-o of rarnnnhn did vrm
gum. aspnalt, etc. ; that it was not miscible generally with every
other substance, which 1 had available to experiment with ; that
it had the effect of commi e iti g to such substances as it was
miscible with, very excessive shrinkage and warpage; and also,
that in a crude state it was more or less impure and contained
particles of apparently powdered bark from trees and water, so
that when melted it generally spit like grease when water is added
to it for a short time until the water was expelled.
•I'Q. 209. Were these facts known generally at that time to
persons skilled in the art?
A. I can only answer as to what I myself knew, but, however,
the material was obtainable in the market and I would presume it
would be known to others if they had experimented with it.
xQ. 210. What was the known method, if any, of purifying
carnauba wax ?
A. In the early days we purified it by melting to drive off the
water and filtering. Later, however, when manufacturing., the
composition of the patent in suit, we first washed the material
with boiling water, and then after decanting, or separating the
wash water from the wax which floated 011 top, we melted and
boiled off what water remained and filtered the resultant wax.
aQ. 211. Without disclosing any matters of confidential nature,
will you please explain how you became familiar with the proper¬
ties of carnauba wax, during the past ten years or so; that is, for
what purpose you were using it or experimenting with it ?
A. Previous to the making of the composition of the patent, in .
suit, my knowledge of carnauba wax was obtained by familiarity
with the composition which was used by Mr. Edison in the early
days of the phonograph for making blanks, upon which records
3t
tains a long enumeration of the qualities which the composition
should possess. In connection with .rQ. 203, I will now ask you
if before you undertook the investigation which ultimately led to
the production of your patented carnaitba composition, you had
already formulated more or less sticcintly, either mentally or
otherwise, a list of these desirable qualities?
A. It is my recollection that I appreciated a part of the proper¬
ties necessary in order to successfully cast a molded record, and
that these views which I had on this subject were susceptible to
change as developed by observation during the experiment. The
one thing which I recollect was foremost in my mind as to. the
properties necessary was the molding property of the material.
I had not been able previous to the discovery of this composi¬
tion to mold any other composition successfully; that is as a
molded record, although many attempts had been made with var¬
ious substances, and I further recollect that it was only after mak¬
ing the composition that its superior wearing properties were
found out. That is to say, that particular feature of the composi¬
tion had not been forecast by me.
xQ: 215. Before you produced your patented carnaitba compo¬
sition. what reasons, if any, had you for supposing that carnaitba
(while imnartimr to the composition the desirable nroncrtics
pect, having a knowledge of the abnormal shrinkage and warpage
as referred to in my previous answer. I11 other words, it is true
that the presence of the carnaitba wax does act favorably towards
undue warpage and shrinkage of the records cast or molded from
the patented composition.
xQ. 21S. If you take the ingredients named, in your patent in
suit, in the proportions there called for, except that the carnaitba
shall be 50% of the entire amount, and treat them in the manner
described in your patent, what can you say. as to your opinion of
sound records cast by dipping from such composition ?
'A. That they could be successfully made, but there would not
result sufficient improvement or advantage by the use of this rela¬
tively large percentage to warrant its use in the proportions men¬
tioned.
.rQ. 219. Suppose the composition be made in accordance with
the process set forth in your patent, except that the carmiuba em¬
ployed be 50% or more of the entire composition, is it your
opinion that if you undertake to cast records from this compo¬
sition there would not be too much shrinkage or warpage?
A. It is my belief that if the materials were thoroughly com¬
bined in the manner indicated in the patent, that there would not
he unfavorable shrinkage or wantage, and that the records could
L..V- wLiuuud lo one or me otlier ingredients, that there would
result a composition capable of being molded and having the
desirable properties in perhaps even greater degree than present
in the patented composition. This however would be an uncom¬
mercial proposition on .account of the relatively great expense of
carnauba wax.
(Continuing answer to xQ. 222.) It is my belief, however,
that if the proportions of the carnauba were continued higher
the point would be reached where its excessive shrinkage proper!
ties would manifest themselves.
•rQ. 223. VVliat percentage, if ..any, of free myricyl alcohol is
iresent in carnauba wax ?
A. The percentage of free myricyl alcohol present in carnauba
,vax is stated by Story-Maskyline to be 30% and this statement
s confirmed by Sturke who made elaborate investigations of this
naterial. This fact is substantially corroborated by the most
the niold as quick and at as high a temperature as was the case
with the blank composition, and as this feature is very important
in the 'quality of the record-surface produced, these results are
of considerable importance.
RE-DIRECT EXAMINATION, by Mr. Dyer: 3c
R-ilQ. 226. Can you state whether in connection with, the pat¬
ented composition as actually used it is necessary to vary' the pro¬
portion of the ingredient and particularly the proportion of car¬
nauba used, as variations take place in the climatic conditions,. '
or because of change in seasons, or because of the localities in
which the records may be used ?
A. The composition is not altered for any of' these reasons
and is the same the year round. The records are sold, all over
the .world and no complaints have made any changes necessary.
R-tlQ. 227. Are you able to say of yottr own knowledge how > 49
extensive were the sales of records using the patented compo¬
sition from February 1st, 1902, up to say — April; 1903, when
effect. If, however, lamp black is carefully selected as to'finencss
and free from gritty particles and lumps, a considerable propor¬
tion of it might be used without producing roughness on the
records.
R-dQ. 230. Having reference to the table given at the end of
your answer to Q. 60, kindly state what percentage of records of
each composition was rejected because they were “Cracked and
Broken,” or had “Chipped Edges,” or were “Broken in Hand¬
ling"? ' . ;
A. In the case of composition “B,” 18 records were rejected
for these causes, or 19.3 per cent. With composition “C,”, 24
records out of 65 were rejected, or 36.9 per cent. With com¬
position “0,” 26 . records: out of 95 were rejected, or 27.3 per
ce.nt. With composition “E,” 14 records out of 86 were rejected,
of 16.2 per cent.
R-dQ. 231. Under the circumstances would these percentages
indicate, perhaps not mathematically, but approximately, any
r the abnormal percentage shown in “D,” the general result of
ic figures are in exact accordance with what I know to be a fact.
R-dQ. 232. Suppose wc eliminate entirely all discards men- 10
Dtted in this table, except in the column of “Not round and Run
ut,” which I understand is indicative of warping or excessive
irinkage; what then would be the respective proportion of good
cords?
A. In the case of composition “B” under this assumption, '56
cords would be rejected out of 70, or a percentage of 80 per
:nt. rejected, or 20 per cent. good. With composition “C,” 23
cords out of 33 would be rejected, a percentage of 69.6 per
nt., leaving 30.4 per cent. good. With' composition “0,” 35
cords out of 65 would he rejected, or 53.8 per cent., leaving 46.2 20
>1* cent. good. With composition “E” 40 out of 68 would be
jeeted, or 5S.8 per cent., leaving 41.2 per cent. good.
R-dQ. 233. What general conclusion would you draw from
A. That the warpage and shrinkage of “B” was greater than
”” that “C” was greater than both “0” and “E” ; the difference
itween the warpage of “B” and “O',” for instance is about 27
:r cent. I notice that the warpage as indicated in these, figures
the case of “0” and ‘E” is not materially different, one being
j.8 and the other 58.8 amounting to 5 per cent., which is a varia-, j0
311 that might naturaly be expected to occur, and does not nec- ,
sarily indicate that one has more warpage than the' other.
R-dQ. 234. 0o these figures or do they not confirm your own.,
actical experience with these compositions?
A.- They do most decidedly confirm my own practical experi-
ice with these compositions. ; ■ •-
R-dQ. 235. What composition do you refer to in answer to xQ. ;
I ? ...
A. That is the composition used by Mr. Edison . when I took
) my first experiment that resulted in the present blank- material. 4°
was a mixture of ceresin and carnauba in the proportion of 70
ceresin and 30 of carnauba.
R-dQ. 236. I11 answer to .vQ. 160, you state: “I furthermore
RIl-DIRECT EXAMINATION, by Mr. Dyicu, continued.
R-dQ. 238. In the manufacture of flic' blank composition, at
what temperature do the chemical reactions take place ?
A. From 250° F. to 320° F. chiefly at between 250° and the
melting .'point of the wax, or rather the temperature at which
the wax remains fluid, which is about 280°. The higher tempera¬
ture of 320° results in a more rapid ebullition of the products of
the reaction.
R-dQ. 239. Then, do I understand correctly that the blank
composition can be perfectly made at no higher temperature than
320° ?
A. Yes, in fact, the very finest material can be made at this
tchiperature, it being very much lighter in color. In practice,
however, for- the purpose of hastening the operation, higher
temperatures are used, and this light color is sacrificed, it being
necessary of course, to fake a very much longer time at the low
temperature, than at the high temperature, and furthermore, it
is difficult to always maintain the low temperature'; that is not to
exceed the low temperature of 320°. And in cases where the
temperature does go higher, there results a darker material, which
the solidified state. The same is also true as to brittleness and
the wearing properties of the material.
R-dQ. 242. You state in your answer. to xQ. 186 that: “In the
earlier records that we put out on the market, the lamp black in¬
gredient was not used.” When did you begin to actually use this
lamp black with composition ?
A. With some of the records that were made in 1901, in order
to build up a stock so as to have a supply on hand when we began
to sell to the market on February 1st, 1902, instead of using
lamp black I. made use of ozokerite for the purpose of coloring
the composition, but we used. only a small amount of ozokerite,
so that at least as early as February 1st, 1902; we were using, the
lamp black altogether. I find that altogether we made about
30,000 records using ozokerite as a coloring, material.
Signature and certificate waived.
JONAS W. AYLS WORTH (recalled).
DIRECT EXAMINATION, by Mr. Dvuu.
Q. 243. So far as the mechanical construction of the
records made by the National Phonograph Company
corned, have those records been changed in any respect s
were first put on the market on February 1st, i 902 ?
A. No, they have not, except that when the molded
were first put out the name of the selection was not m
the end, as we now do. Otherwise, the records have bee
the same. I might say, however, that because of some le
plication, for a few months last year the internal ri
omitted, and the records were reamed out smooth on the
but we again returned to the rib. 'Pile drawing of the |
suit, shows very clearly the form of record made by the
Phonograph Company. The Columbia records copy t
so closely that except for the name on them, it would b
impossible to tell them apart.
Q. 244. I-Iavc you read the deposition of Mr. Cameron
ant’s patent expert in this case? A. I have.
Q. 245. Please consider the patents referred to by M
eron in answer to question 3, and state whether or not
opinion these patents support the conclusions reached
Cameron in next to the last paragraph of that answer, ai
if any bearing, those conclusions if correct, may have
specific art with which we are here dealing, namely, com]
for use in the manufacture of molded sound records?
A. In the answer to which you call my attention, Mr. (
refers to Tainter patents, Nos. 393,190 and 421,450, ant]
son patents Nos. 400,648, 430.274, 484,582, 484,583, a
191. 1-Ie incidentally refers to Edison patent No. 200,52 1
& Tainter patent No. 341,214, and to Berliner patent h
623. As a result of his examination of the two Tainter
and of the five Edison patents, first above referred to, he
the following conclusion :
■ “I find therefore, from this review of the art
materials heretofore employed, for making soi
ortls, whether duplicates or originals, are mater
wax or wax-like character, and that in the art tl
alency of metallic soap and fatty acids with was
as bees’ wax, camauba wax, cercsin, and mix
compositions containing these, is fully recogn
blank on which a record can be directly recorded, and a composi¬
tion which can be successfully used for making duplicates, nor do
the conclusions apparently recognize the actual situation as it ex¬
isted in the early days of the commercial phonographic art. As a
matter of fact, only one of these patents (Edison No. 484,582)
refers to the duplication of records and all the others relate to the
making of original records. I have tried to make it clear that
there is little or no connection between the art of making original
records on a blank tablet, and the art of molding duplicate rec¬
ords. 'I’lie fact that a composition might be perfect as a blank
material would by no means indicate that it would have any util¬
ity at till as a material front which to make molded records. In
fact the present blank material hits not been improved for many
years, and it may be considered perfect for its purpose; but it is
not suited for tile molded record art, and I firmly believe that if
the blank material was all that we had, the molded record art
would be materially behind its present state of development. Fur¬
thermore, many, if not all of the patents, reviewed by Mr. Cam¬
eron, in his answer, describe inventions that are obsolete and have
been obsolete far many years — inventions that preceded the de¬
velopment of the present blank composition and were relegated to
the background by the blank composition and are now looked upon
only as historical curiosities. For instance, the Tainter patent
No. 421,450 of February 18th, 1890, (application filed Novem¬
ber 14th, 1887) suggests the possibility of employing ozokerite,
either alone or mjxcd with "bees’ wax, carnatijm wax, and others”
as a coating for a paper tube to constitute a recording tablet.
referred to by Mr. Cameron, No. 400,648, suggests the use of
stearic acid, preferably mixed with ccresin, bees’ wax or paraffine,
or with ccresin and bees’ wax, as a material for blanks, but the
composition of tins patent was not only not used practically, so
far as I know, but was also displaced by the modern soap com¬
position. The patents to Tainter and to Edison so far considered
are good examples of the early efforts made in the art to pro¬
duce sound recording materials, and in which all sorts of waxes
and gums and fatty acids were mixed together in varying pro¬
portions. Personally, I tried thousands of such mixtures and the
patents that I review in answer to Q. 43 disclose some of the ef¬
forts of others in the early days.
The first reference to a metallic soap among tile patents men¬
tioned by Mr. Cagieron is in patent to Edison, No. 430,274 of
June 17th, 1890, the application for which was filed Tilly 30th,
1888, and suggesting preferably a lead soap. This patent v'as
tlie application for Edison patent No. 430,274, and even when
all that work had been done, we had in the art only the present
blank composition and we did not have in the art a suitable
molded' record composition.
Tlie next patent in order of date of filing, referred to by Mr.
Cameron', is Edison patent No. 488,191, of December 20th, 1S92,
application filed January 19th, 1889. Although at tile date of
the application for this patent the modern blank composition, was
pretty well developed ; this patent lias no 'relation whatever to
tlie blank art or to tlie molded record art, but it relates to a
scheme on which Mr. Edison was working in the early days
and which never materialized into successful accomplishment.
That scheme was to make tlie recording tablets of flexible ma¬
terial, so that they could be folded and sent through tlie mails
in an envelope. Consequently, the important consideration was
to make a material that would be highly flexible, aiid the patent
states that :
“There are many compounds of wax or wax-like
material' which may he employed for tlie purposes of
my invention. What I prefer to use is a mixture of
asphalt, with Japan wax, or pitches made from .the dis¬
tillation of fatty oils, or combinations of fatty acids,
' any of which materials are equivalents of wax foi\ the
purposes of this invention.. The proportion of the dif¬
ferent .substances will vary as the conditions differ and
as sheets of different degrees of flexibility are. required."
The last Edison patent referred to by Mr, Cameron in his answer
that is to say, last in order of filing— is No. 484,583 of Octo¬
ber 1 8th, 1892, filed May 27th, 1890. This patent relates specifi¬
cally to a jewel recording tool and states that :
"The recording surface. of the phonogram blank is ordi¬
narily of wax or a 'Stearate or hard metallic soan. or
In order to show that the equivalency of these diltcrent ma¬
terials extends to the molded record art, Mr. Cameron refers to
Edison patent No. 484.582 of October 18th, 1892, application
filed January 5th, 1888, but this patent was applied for long
before metallic soap compositions were known, and when as a.
matter of fact, the Edison Company was using a mixture of
ceresin anil carnauba, which has none of the attributes of a suc¬
cessful inplded record composition, either in- molding properties
'or in the results to be obtained from it. At the date of the
application for this Edison patent, the only known material, so
far as the literature of the art is concerned, that had been sug¬
gested for recording purposes, were compositions employing such
will further say m answer to the question that if it be admitted
that in a general way many materials were wax-like in character,
so far as their capacity to be cut by a recording stylus is con¬
cerned, that fact would have absolutely no bearing upon, or
relation to, the possibility of their use in compositions for mak¬
ing molded records. The two arts are quite dissimilar in many
respects. They are practiced in different ways, they result in
different products,' and they make use necessarily of different
compositions. With the recording art, the essential feature of
the composition next to its smoothness, is its capacity to be
cleanly and readily cut by the microscopic recording stylus. With
the molded record art, it is absolutely immaterial whether' the
composition can be cut by a recording stylus, and as a matter of
fact, it can only very imperfectly.be cut by a recorder. In ; the
recording artj warping and shrinking in manufacture are abso¬
lutely immaterial, because the blanks are trued up after they are
seasoned, but with tile molded record artj .warping and shrinking
are factors which must be carefully avoided.
Q. 246. In answer to 0,4 of his deposition, Mr. Cameron
states that the Edison patent No. 406,576, recognizes the fact
complainant’s hi; I
I.SWORTII.
273
concerning carnauba wax, that advantage may be taken of its
shrinking properties in passing from a molten to a hard or set
condition. What bearing, if any, has this fact on the molded
record art?
A. The Edison patent describes a composite recording blank,
having an outer surface of a metallic soap, such as stearate of
soda, and a body of asphalt. It is pointed out that in molding
asphalt “it does not contract in hardening, and it is therefore,
difficult to get it out of the mold again. By mixing from five to
seven per cent, of carnauba wax with the asphalt, a compound is
formed which shrinks slightly in hardening, and can therefore
be re.adily removed from the mold” (p. i, 1. 72-79). With
Edison, dealing with a non-contracting material, the sole pur¬
pose of adding carnauba was to produce shrinkage. It did not
contribute to the hardness, in fact, the recording surface is the
usual material, and there was manifestly no problem of warping
or uneven shrinkage to be overcome, or in fact, any of the fac¬
tors to be reckoned with in the molded record art. With the
composition of the patent in suit, there is no need to take “ad¬
vantage” of the excessive shrinkage of carnauba; in fact, the
blank composition possesses sufficient shrinkage. I have pointed
out that apparently the effect of adding carnauba to any compo¬
sition would be to impart to the same excessive shrinkage and
great warping, but I found that, contrary to my expectations,
by adding carnauba (which warps and shrinks excessively), to a
metallic soap composition (which also warps and shrinks ex¬
cessively) I obtained a composition in which warping and shrink¬
ing were greatly reduced and made very much mor’e uniform.
Q. 247. I call your attention to Mr. Cameron’s answer to Q. to
of his deposition, and ask if you agree with the conclusion
■ reached by hint therein ? . .
A. I understand that Mr. Cameron is not a practical man and
that he has had no practical experience with the development or
manipulation of sound record composition. If Mr, Cameron
had been a practical man, I think he would have reached another
conclusion. His position is based entirely on the theory that the
ordinary blank composition (such as is described in Macdonald
patent No. 606,725)- possesses every single characteristic that a
successful molded record. composition should have, except the
1 one characteristic of hardness, and that the addition of carnauba
• wax supplies this one, and only this one characteristic; and his
further theory is that since carnauba wax had previously been
used m connection with ozokerite and bees’ wax it could obviously
be employed in connection with and as an addition to the blank
composition. Now, as a matter of fact, as I have previously
testified, the blank composition is not suitable in the molded
record art, and would not be suitable for that art, if sufficiently
bard. Mr. Cameron, for instance, states that "experience has
taught that it does not -stick or adhere to the mold,” when as a
matter of fact, the experience of the art is just to the contrary,
and the blank composition does stick to the mold, and if used
would make the surface rough and foggy. He also says that
“experience has taught that records molded from this material
shrink away from the mold without warping, so as to render it
incapable of use on standard talking machines ;” experience has
taught just the contrary, and tve know that the blank composi¬
tion is fatally defective in this respect. Mr. Cameron states that
if carnauba wax were added to the blank composition it “would
not interfere with, but would possibly slightly increase the
shrinking properties of the composition.” He reaches this con¬
clusion from the Edison patent No. 406,576, which states that
the addition of carnauba wax to asphalt will, increase the shrink¬
ing properties of the latter. This shows how utterly impossible it
is to assume that because a certain result takes place with
one composition the same result is going to take place in an¬
other composition, because, as a matter of fact, the carnauba
wax decreases the shrinking of the blank composition. He says
that if a person added carnauba wax to the blank composition
“he would know from the same patent that it would not inter¬
fere with the limpidity imparted to the composition by the ceresin
wax.” As a matter of fact, as I have previously testified, the
Presence of the carnauba actually increases the limpidity. Fur¬
thermore; he says that such a person “would have been taught
by the Tainter .patent No. 393,190,’ that it. would not interfere
with the fine texture, which would enable the material to be cut
smoothly.” The fineness of texture has nothing whatever to do
with the capacity of the material to be cut smoothly while hot
' (which I presume is what, Mr. Cameron is referring to, because
that is the characteristic set forth in the patent in suit) but is
dependent on the molecular conditions. Some compositions are
of very fine texture, and cannot be cut smoothly while hot; for
example, this Tainter patent on which Mr. Cameron relies, de¬
scribing the composition of carnauba and bees’ wax, is a very
good illustration of just such a composition. If such a composi¬
tion could be molded as a record, it could not be cut smoothly
while hot, but the material would follow the cutting knife, so as to
274 COMPLAINANT’S RliUUTTAL PROOl'S.
drag- the record out of the mold. Another illustration of such
a composition is found in my patent, No. 676,1:1, referred to in
answer to Q. 48. That was a composition with a very line tex¬
ture, but 1 was unable to effectively ream it while hot.
In view of these facts, I believe that Mr. Cameron has reached
the conclusion that he has, without really understanding the sit¬
uation. The addition of carnauba does more than to increase the
hardness of the composition, since it also results in the composi¬
tion having properties that are not found in the blank composi-
to tion, or in carnauba when considered individually. And the addi¬
tion of carnauba results in properties which 110 one could possibly
foretell without experiment. Furthermore, even if the only func-
lion of the carnauba was to increase the hardness of the blank
composition, I do not see how any one could tell without experi¬
ment that the carnauba would be miscible with the blank composi¬
tion. Although I had been familiar with carnauba for many
years, as well as with the blank composition, I did not know that
they were miscible, and in view of the complex nature of the mate¬
rials entering into these compositions, I would not undertake to
20 say myself, until I had found out by experiment, that carnauba
wax would be miscible with the blank composition. Mr. Cameron
seems to suppose that it follows as a mathematical certainty that
since carnauba wax is miscible with bees’ wax or paraffin, it is
also miscible with the blank composition, but that of course docs
not follow because there are other materials with which carnauba
wax is miscible and which arc not miscible with the blank com¬
position. For example, carnauba- wax is miscible with asphalt
as stated in Edison patent No. 406,576, but asphalt is not mis¬
cible with the blank composition. And, there are other materials
,50 with which the same uncertainty arises. Considering the enor¬
mously complex character of the blank composition I do not be¬
lieve that any chemist, however skillful he might be, could un¬
erringly predict that a certain material or . class of materials
would be miscible with the blank composition, or that another
material or class of materials would not be.
Q. 248. Have you read the deposition of Professor Holton,
one of the defendant’s chemical experts, who testified herein ?
A. I have
Q. 249. Before taking 'up Professor Holton’s deposition, please
■40 refer to the records mentioned in your answer to R-dQ. 227, and
state of what composition and by what process the three million
records therein mentioned were made?
A. Those records were made of the exact composition and
JONAS W. AYLSWOKTII,
by the exact process described in the patent in suit between lines
24 and 101 inclusive of page 2, thereof.
Q. 250. Kindly take up Professor Holton’s deposition and re¬
fer to his answer to Q. 3, in which he states that
“Carnauba wax itself is chiefly composed of a hard
wax-like compound ether (myricyl cerctate) and a
minute quantity of free alcohol (myricyl alcohol).’’
Does this statement of Professor Holton agree with the liter¬
ature 011 the subject of carnauba wax?
A. It does not. Tile literature on the constitution of carnauba
wax varies as to the constitution of the same, but the general
opinion of the writers on the subject favors the conclusion that
the percentage of free luyrical alcohol in carnauhn is very consid¬
erable. I have already referred to the fact (in my answer to
xQ. 223) that the proportion of free myrical alcohol as deter¬
mined by Story-Maskylenc was 30%. This was confirmed by
Sturcke, who is the one authority from whom all the. modern
books has derived their information on this subject. In Watt’s
Dictionary of Chemistry, (Revised Edition 1888,) the authority
on chemical matters in general, it is stated that :
“The greater part af the wax is myricyl cerctate and
myricyl alcohol.”
It is true that in the book by Lewkowitsch (referred to by
Professor Holton ill answer to xQ. 69 of his deposition), that
writer states that the wax contains “small quantities of' free
ccrotie acid and myricyl alcohol.” I11 a work such as that of Lew-
kowitsch. dealing with many thousand substances, the informa¬
tion is necessarily based on the investigation of others, and Lew-
kowitsch derives lus information concerning carnauba from the
■ work of Sturcke. which is directly referred to.- Undoubtedly
Lewkowitsch incorrectly abstracted the work of Sturcke in this
particular, because the conclusion stated by Lewkowitsch docs
not correspond with Sturcke investigations. I have carefully
read a full translation of Sturcke's work on carnauba wax, which
1 understand is to be introduced in connection with the deposition
of Professor Stillman.
Furthermore, in Wright’s well known standard work on “The
Analysis of Oils and Allied Substances (London, 1903) lie
criticises this very statement of Lewkowitsch and says (page
229): p
“Carnauba wax is chiefly composed of myricyl cere-
tate; it also contains free ceryl and myricyl alcohols,
which must be present in considerable quantity judging
t’s RliUUTTAL PROOlfS.
276 COMl'UAINAN
by the large acetyl value (page 144) found by Lew-
kowitsch.”
The interpretation of Sutrcke's works by other authorities such
as Watt’s Dictionary of Chemistry, above referred to, and
“Allen's Commercial Organic Analysis, Volume 2, Part 1 (Pbila.
1S99)," are contrary to the interpretation of- the same as given
by Lewkowitsch. 1 might also say that from my own reading of
Professor Sturcke's work, it is perfectly clear- that the percentage
of free myricyl alcohol determined by him is very considerable.
Q. 251. Have you ever bad occasion yourself to determine the
fact whether carnauba wax does contain free myricyl or other
alcohol, and if so, when did you make that determination and with
what result ?
A. Up to the time .of filing the application for my patent I had
made no investigation into the chemistry of carnauba wax. I
observed, however, that in the manufacture of the composition a
chemical reaction took place, and knowing from, my experience
with the blank composition that it contained free stearic acid, and
being informed by the literature that carnauba wax contained
free alcohols, I felt reasonably certain that an ester or compound
ether was formed, due to the reaction between the free stearic acid
and the free alcohol or alcohols, as such reaction would, in addi¬
tion to the product of a compound ester, form water which would
cause the ifoaming noticed. Also, when I examined the six
Columbia records referred to in my first deposition, and the
analysis of which appears in my answer to Q. 8 thereof, I then
determined that there \vere present ’in defendant’s composition
compound ethers different from any which exist in carnauba wax,
and which could be caused by nothing else than the reaction be¬
tween the free stearic acid and the free alcohol or alcohols, or
possibly an interchange of acids between the stearate of soda and
the ccrotatc of myricyl (the ester which is present in carnauba
wax) which latter interchange may take place in addition to the
formation of the compound ether referred to. This determina¬
tion of the presence of new compound ethers in defendant's com¬
position was made by separating the whole amount of the com¬
pound ethers present in the composition, saponifying the same
with caustic potash in alcoholic solution, and separating the
alcohols and hydro-carbons from the potash soap of the ester and
then decomposing the soap by acid treatment in the rcgulai
methods of soap analysis to separate the fatty acids. These fatty
acids after washing and drying had a melting point much lower
than the fatty acids which are contained in carnauba wax, After
■ JONAS W. AYLSWORTH.
277
noting this a further separation of these fatty acids was effected,
resulting in a mixture of fatty acids having a melting point of
59 degrees centigrade, and a crude cerotic acid having a melting
point of 79 degrees centigrade; over -/$ of the total fatty acids
thus separated were of a much lower melting point. Now since
carnauba wax does not contain fatty acids of this melting point,
therefore the esters from. which these acids were obtained are en¬
tirely different from any which were introduced by the addition
of the carnauba, and hence it would follow that the carnauba wax
must have contained free alcohol.
During the past ten days I have in collaboration with Pro¬
fessor Stillman of Stevens Institute, made very elaborate experi¬
ments in connection with these matters, including the .determi¬
nation of the substantial percentage of free alcohol in carnauba
wax. The experiments were conducted principally on two sepa¬
rate lines of investigation ; First, the reaction which causes foam¬
ing was- investigated in the following manner ; The soap com¬
position of the patent, without the addition of carnauba or
ccresin or lamp black, was prepared. The carnauba wax was
purchased in the open market by Dr. Stillman. This material
was the substance which is used in the talking machine industry
and is imported from Brazil by Smith & Nichols, a firm doing
business in New York, and from whom I observe defendant also
manner described in the patent, and after separating from the
water and then rcmelting to drive off any remaining water, was
carefully filtered through the cloth used in filter presses, and
after filtering was heated up to 450° F., to make sure that all
water was removed. At this temperature the wax was perfectly
tranquil and free from bubbles or any indication of decomposi¬
tion. It was then cooled down anti marked and was ready for
use in succeeding tests and experiments. The stearic acid was
obtained in the open market and is the very best grade obtainable,
knowm as the “Century” brand. The soap composition of: the
patent was also heated up to a temperature of 450° for about
two hours and was free from any signs of ..decomposition pro¬
ducts as evidenced by absence fr.0111 foaming or bubbling. This
soap composition of the patent and the purified carnauba wax,
and the mixture of the soap composition and 'the carnauba
wax placed iii separate flasks having an inlet and outlet for the
purpose of displacing the air by nitrogen, were heated in, a wax
bath to a temperature of about 450°, and provision was made to
connect the flask with apparatus which would catch all fatty
vapors, such as stearic acid, which might be evolved, and also
provision to catcli and determine the weight of water which
might he evolved in each case. The substances were heated in a
slow current of perfectly dry nitrogen, until no further ebullition
of water occurred. Only an extremely small amount of water
was collected from the soap composition and the carnauha wax
separately heated, hut from the mixture of the soap composition
and the carnauha wax there was evolved sufficient water to
account for about 30% of free myricyl alcohol in the carnauha
10 wax used. Now. since the substances separately heated did not
evolve the water, which was evolved only in the case of the
mixture, and knowing the composition of the soap material to
contain free acid, this forms very strong proof that there is
reaction between the free acid and free alcohol to form an ester.
Second, the soap- composition of the patent the same as used
in the preceding demonstration in accurately weighed amount,
and carnauha wax in accurately ' weighed amount, and the mix¬
ture of the two in the proportions of the patent, accurately
weighed, were each heated to 450° in vessels wherein pro-
20 vision was made that nothing whatever could escape as
vapor. The three separate vessels were heated in the same
wax hath to insure absolutely uniform condition, the heat
being maintained for three hours. The object of this experiment
was to note how much, if any. of the free stearic acid of the
patented composition (i. c., the soap mixture and the carnauha)
disappears to form esters or compound ethers by the combina¬
tion of the free stearic acid with the free alcohol of the carnauha
wax. To this end, after the completion of the heating at 450°
under identically uniform conditions, the free acids contained in
3° and evolved from the soap mixture separately heated were accu¬
rately determined, the free acids contained in or evolved from the
carnauha wax were accurately determined, and the free acids
contained in and evolved from the mixture of the metallic soap
and carnauha wax were also accurately determined. Obviously,
if there was no combination between the free stearic acid and
the alcohol of the carnauha wax in the case of the mixture of
the soap composition and the carnattba wax, then the free acids
contained in and evolved from the soap composition as separately
heated and the carnauha wax as separately heated— that is to
40 say, the combined acids from both of these sources— should cor¬
respond identically with the free acids contained in and evolved,
from the mixture of the soap composition -and carnauha when
heated together, because the total weight of the soap composition
JONAS W. AYLSWORTH.
was the same in each case as also the weight of the carnauha.
Now, if after such a demonstration it were found that the free
acids contained in and evolved from the mixture of the metallic-
soap and carnauha were less than the combined amounts of free
acids contained in and evolved from the separately heated metallic
soap, and the separately heated carnauha, the difference would
indicate the amount of free acids that had entered into combina¬
tion with the free alcohol or alcohols of the carnauha wax. The
result of this test showed the disappearance of a sufficient amount
of free stearic acid in the case of the mixture of metallic soap and 10
carnauha wax to account for the presence of a very considerable
proportion of free myricyl alcohol in the carnauha wax. .1 might
, mention as a confirmatory fact that in the titration of the, free
acids, I observed that in the case of the mixture of the soap
composition and carnauha wax, there was a very much larger
proportion of insoluble ethers present in the solution than was
present in .the combined solutions of the carnauha wax and the •
metallic soap composition as heated separately. This was an
ocular confirmation of the results obtained by the chemical ex¬
periments referred to. In fact, as a result of these experiments 20
I am almost inclined to believe from large percentage of myricyl '
alcohol necessary to combine with the free stearic acid found to
have disappeared, that a part of the free stearic acid may have
displaced a part or all of the combined cerotic acid, so that in¬
stead of having myricyl cerctatc (the natural compound ether of
the wax) we would have only myricyl stearate, the new wax-
like compound ether. But that there is free myricyl alcohol in
the carnauha wax and that a reaction between the same and the
free stearic acid occurs to form myricyl stearate, the experiments
made by Professor Stillman and myself satisfy my mind beyond 3°
the possibility of a doubt.
Q. 252. From what you have just said, I take it that you do
not agree with the statement of Professor Holton contained in
answer to Q. 3, and elsewhere expressed in his deposition that :
"It is barely within the range of possibility that the
minute quantity of free alcohol contained in carnattba
wax might react under the temperatures mentioned
upon some of the free stearic acid, so as to produce a
very small additional quantity of wax-like compound
ether, but if this reaction docs occur (and as to whether 4°
it docs or not,, no scientific chemist is yet able to stale
authoritively) the quantity of wax-like ethers thus pro-
ducqd in so minute as to be entirely negligible.”
complainant’s UHUUTTAL PltOOl'S.
A. No, I do not agree with Professor Holton, who cites no
proof whatever in support of his statement. 1 have found, as a
matter of demonstration, first, that there is a large quantity of
free alcohol in carnauba wax, second, that beyond any question
whatever, there is it reaction between the free alcohol and the
free stearic acid, third, that a very large amount of wax-like
ethers result from this reaction, and fourth that, regardless of the
amount of compound ethers formed, the result is not negligible,
but is commercially of the highest importance.
Q. 253. In answer to Q. 1 1 Professor Holton states that cer- .
tain 'figures given by you in answer to xQ. 75 of your former
deposition arc incorrect. Do you agree with Professor Holton in.
this respect?
A. Yes, the figures as given by me on cross-examination tire
wrong. These calculations were hurriedly 'made in response to
the question by Mr. Massic, and there was a mistake in arith¬
metic. Of course, if 1 bad gone over ihe figures carefully I
would have detected the error.
Q. 254. Professor Holton in answer to Q. 14, referring to Edi¬
son patent No. 400,648, describing a composition in which stearic
acid and bees’ wax are used, states that the combination of the
free alcohol of the hee’s wax and the stearic acid “would make a
wax-like compound ether’’ if die two were simply melted to¬
gether. Is this correct ? ■
A. This is not correct. There could be no combination of
stearic acid and free alcohol by simply mixing the melted sub¬
stances together. Combination would only take place by the aid
of a very much higher tciiipcrature than that necessary to melt the
two substances, or by the introduction of a dehydrating substance,
such as hydrochloric acid gas, or strong sulphuric acid.
(3.255. Professor Holton in answer to Q. 17, seems to think
that the frothing which takes place when the carnauba wax is
added, as, described in the patent in suit “is by no means a con¬
clusive proof , that a chemical action is taking place,” and he sug¬
gests that when carnauba wax alone is subjected to a high tem¬
perature a violent foaming and frothing takes place, due to the
elimination of contained moisture and air therein. 1-Ie also points
out that in heating a composition to a high temperature suggested
in the patent, the parts of the mass closest to the heat are likely
to be volatilized or dis-associated to cause frothing or foaming.
Do you regard Professor Holton’s criticisms of the frothing or
foaming test as being valid ?
A. I do not; Professor Holton’s statement is misleading, and
shows a very imperfect observation of what takes place when
carnauba wax is melted. The fact is that carnauba wax in its
crude form as purchased in the market usually does contain
mechanically mixed water and air, but the mere act of melting at
a temperature of boiling water or slightly higher, eliminates this
water and air and the wax then becomes perfectly tranquil and
free from froth or foam. In the course of the manufacture of
the patented composition all these causes of froth and foam were
eliminated from the carnauba wax before it was added to the soap
mixture, so that any frothing which takes place afterward is not
due to the water contained in the carnauba wax as stated by Pro¬
fessor Holton. As to the decomposition at the points of contact'
with the vessel in which the compositions are heated, in the ordim
ary practice in making these compositions the vessel is so ar¬
ranged that it becomes uniformly heated, so as to avoid any such
decomposition, and this eliminates the possibility of decomposi¬
tion as stated by Professor Holton' taking place and accounting
for the foaming noticed in making the composition. Furthcr-
.more, if such decomposition due to overheating caused tile ex¬
cessive foaming noted, the same would take place with the blank
composition which is heated in the same manner and with which
no foaming does take place, excepting that due to the reaction
in making the soap composition, which is characteristically dif¬
ferent from that due to. the reactions of carnauba and is finished
in a much less time.
Q. 256. From your extensive experience as a commercial
chemist, particularly versed in this art, and observing the pre¬
cautions which you do observe in the manufacture of the com¬
position, would you regard the prolonged and characteristic
frothing and foaming as being. a substantially conclusive indica¬
tion that a chemical reaction was taking place?
A. Yes, even if I had never made any other tests in the matter,
and the precautions as to heating ;both substances up previous to
their mixture had been carefully carried out, I should consider
the evidence of frothing and foaming noted on their mixture at
the high heat to be a very conclusive indication that a chemical
reaction was taking place, and knowing the nature of the ma¬
terial, the only logical conclusion that could be arrived at under
those circumstances would be that water was being given off by
the reaction and that an ester reaction was taking place.
Q. 257. In answer to Q. t8 Professor Holton questions the
conclusive nature of your statement that another indication of
the formation of the compound ether is the different nature of
36 NEW
282 COMPLAINANT’S UKUUTTAL PROOFS.
the two compositions made at a high temperature ancl at a low
temperature. 1-Ie stales that the mere heating of such a mixture
for an extended time “contributes materially to emphasize this
change in the physical characteristics of the material wholly
independent of any chemical reaction” and that this physical
change “alone would cause the molded composition to offer
greater resistance to the wearing action of the stylus,” and in
this connection lie refers to Tainter patent No. 421450, as an
example of the concentration or toughening of a material by
prolonged boiling. In your opinion, has Professor Holton ade¬
quately disposed of this evidence of the formation of a compound
ether as testified to by you?
A. No, I do not think so. If Professor Holton had proved or
cited any experiments to prove that there was no chemical reac¬
tion, and that we still had the physical differences noted, then
there would be some grounds for bis statement. His reference
to the Tainter patent No. 421,450 does not seem to me to be
pertinent, because that patent relates only to the idea of boiling
ozokerite, so as to ‘drive off the volatile impurities, and consc--
quently make it tougher; but in this art the high heating does
not drive off any volatile impurities, although a certain amount
of stearic acid is volatilized, but this we rqilace at the end of- the
operation. This particular observation I made not for the pur¬
pose of having it stand alone as an indication of the formation
Of a compound ether, or of some other chemical change, but as
confirmlhg the other reasons. In most chemical work the mani¬
festation of a single phenomenon while it may be indicative of a
certain chemical effect, would not be accepted as necessarily con¬
clusive; but if we encounter several phenomena, all indicating the
same effect, we can safely assume the effect to be conclusively
demonstrated
Q. 258. In answer to Q. 17, xQ. 81, and xQ. 123, Professor
Holton expresses the opinion from the analysis made by you of
defendant’s records, and from the analysis made by him of cer¬
tain experimental records introduced by Mr. Thornbcrry, that all
the free stearic acid is accounted for, so that none could exist in
combination with the free alcohols of the carnauba wax. Do
you regard Professor Holton’s views in this respect as sound? ‘
A. No, I regard Professor Holton’s deductions and calcula¬
tions as contained in the answers to the- questions . referred to- as
most unscientific and unreliable. 1-Ie attempts to compare the
analysis of a composition made previous to March , 20th, 1905
(the date when I received defendant’s records for analysis), with
the calculated percentage of a composition known to contain a
different precentage of carnauba, and in which he assumes the
commercial materials used in the one case to have the same
definite composition as they’ do in the other case. The Thorn-
berry composition was made in December, 1906, nearly two years
after the records which I analyzed were made. The free stearic
acid contents of these compositions will vary as much as 10%
in two different lots, due to acid vaporization, and the variation
of the Na-O contents of the caustic soda and sal-soda ingredients.
I-Ic assumes, I observe in answer to Q. 11, that the free acid is
pure stearic acid, and calculates 25.4%, and in xQ. 81, he assumes
that the free acid is the commercial article, and calculates 27.6%
of free acid. In his determination, by experiment of the free acid
in the Thornbcrry record, he docs not state whether he determined
it as pure stearic acid or as the commercial article, but he adopts
the calculated amount — 27.6 — in making his comparison. It is
impossible to calculate with exactness the true percentage com¬
position of a compound made from a formula in which commer¬
cial chemicals known to vary are used, and in which some of the
ingredients are volatilized during the manufacture of the com¬
pound and during the manufacture of the product from the
compound. Variations could easily occur amounting to several
per cent, between calculations thus made and the exact composi¬
tion as determined by analysis; It only retpiires a very small
percentage of free stearic acid to disappear in combination with
the amount of myricyl alcohol contained in carnauba wax in the
proportion as shown by the analysis, namely about 8%, even
assuming that 30 % of this 8% is free myricyl alcohol. The cal¬
culated amount of palmitic acid required to combine with the
free myricyl alcohol contained in the amount of carnauba con¬
tained m defendant’s record, as shown by analysis, would be
1,4%') assuming that the carnauba contained 30% of free myricyl
alcohol). .Now, since the Thomberry record referred to stated
to contain 6% of carnauba. the amount of free palmitic acid
required in this case would be still smaller. Calculating the
amount of pure stearic acid required for the Columbia record
would be 1.56%, and for the Thomberry record somewhat less
than this. Then, if we assume the free acid to be composed of
half stearic and half palmitic, the Columbia record analyzed
would require 1.48% of free stearic acid, and the Thomberry
record somewhat less than this amount to combine with the free
myricyl alcohol even assuming that tlie carnauba wax used con¬
tained as much as 30% of free myricyl alcohol. If Professor
I-Iolton had made up two compositions with exactness of the
same ingredients, and taken care that no acid vapor escaped, in
one of which lie added carnauba wax in the proportion indicated
in my analysis, and in the other no' carnauba wax, and had then
determined after heating both compositions for the same length
of time, and at the temperature mentioned in the patent and
had then determined by analysis the percentage of free stearic
acid in each, and if he found that the amount of free stearic
was the same in both, then his deductions would be correct. In
10 the manner he has arrived at his conclusions, they are of no
value whatever as proof for or against the formation of an ester
in the composition. In addition to the chances of error in Pro¬
fessor Holton’s deductions as above pointed out, the analysis
which I have made could easily have an error which might affect
the free' stearic acid calculations of Professor Holton from one
to two per cent. I observe further that Professor Holton com¬
pares Thornbcrry record formula B, without carnauba, and
Thornberry record, formula B with carnauba, as regards the
amount of free stearic acid contained in each, and he states that
20 the quantity found was “practically identical,” He gives no
figures in his statement as to the amounts found. The same
criticism regarding this comparison of formula B with and with¬
out carnauba is applicable to this point, as that which I have
previously made regarding his comparison of the analysis of
defendant’s record and the Thornberry record, formula B with
carnauba. Since the percentage of free stearic acid necessary to
combine with 30% of myricyl alcohol contained in the amount
of carnauba wax added to the Thornberry composition would be
less than Ij4%, this relatively small amount may have been
30 regarded by Professor Holton as immaterial ; at least he gives
no figures to determine what the variation was between the two
compositions, and the fact that Professor Holton did not find
them to be absolutely identical’ means, of course that .there was
some difference. Furthermore, it is to be observed that Professor
Holton found the amount of free stearic acid in the Thornberry
composition with carnauba to be “practically identical with the
free stearic acid in the Thornberry record without carnauba.”
Now in the former Case, we have 6% of carnauba wax which
•must be taken into account, so that leaving out of consideration
40 all reactions and regarding the two compositions as absolutely
alike in every other respect, the quantity of free stearic acid
should not be identical in the two cases, but there will be a
variation of at least i°/o. Apparently, therefore, Professor Hol¬
ton regards a small variation of this amount as immaterial, wljcn,
as a matter of fact, it is enough to take care of 30% of free
myricyl alcohol.
Q. 259. I11 answer to xQ. 66, Professor Holton considers the
several hardening materials known in the prior art, but he does
not seem to be able to say with any degree of positiveness that
any of these materials, except carnauba wax. could be effectively
used, nor is lie able to say which materials would be miscible and
which would not be. He does, however, refer to the possibility of
using sand and other gritty materials, and states that these ,
“would be undesirable ingredients to add for the purpose of
hardening the soap composition of the patent in knit.” Why
would, the use of sand, or other gritty material, be undesirable?
A. Locking at the matter superficially, it would appear that if
you add a gritty material to the composition it would naturally
make a rough surface, and this I have no doubt was tbe way in
which the question was regarded by Professor Holton, as well
as Mr. Cameron, who testified to the same effect. A mail, how-
thc matter would conclude that since the gritty particles were 20
admixed with an extremely limpid composition, the composition
would flow completely around and cover the gritty particles, so
that the surface would lie perfectly smooth, and when Mr. Edison
suggested in his patent No. 713,209, that the metallic soap com¬
position might be admixed with gritty' materials, lie no doubt
argued in this way. And, in this respect, Mr. Edison was very
largely right, because we find in the molded record art. that
careful filtering to remove foreign particles, such as dust and
dirt which get into the scrap composition, is not necessary as in
the manufacture of the blank composition, where a surface has ,0
to be produced on which a record can be cut. And, in the manu¬
facture of a molded record composition, even when quite large
percentages of gritty substances are added, the surface looks to
the eye to be perfect, but to the ear the reproduction is rough,
although not so rough as one might think. The reason for this
roughness is that the shrinkage of the composition is greater
than that of the gritty particles, which from this cause produce
microscopic irregularities in the surface, but this fact could only
be determined by experiment.
Q. 260.I11 R-tIQ. 148 and R-dQ. 150, Professor Holton states 40
that .with 'the composition of formula B of Macdonald patent No.
606,725, the amount of free stearic acid would be 122.4 pounds.
Would it, in your opinion, be possible to accurately calculate the
iis a large quantity of water, and changes in its i * b
O to quite a large extent. This also would have a very hu g
lueuce on the amount of free stearic acid. The ue I*,
s during the heating and could not be figured as the full amoq
,en in the- formula. Now, in making a calculation like that t
ofessor Holton, and leaving out entirely the important fact,
loss by vaporization of stearic acid, it would he possible
« as examples of these variable factors figures which won
vc results at least 10 pounds on either side of the amount c,
lated by Professor Holton, or, in other words, within tho
nits it would be possible to get any result we wanted to g
n the subject of vaporization of the stearic acid, I know rc
ipcrience that its loss is jn the neighborhood of io/„ of t
ee stearic acid, or about 2% of the whole composition, lit.
delations of Professor Holton are to my mind is unscient.
id unfair as if a person having a problem m algebra to solve, a
JONAS W. AYLSWORTH. 287
Q. 261. In answer to R-dQ. 1 52 Professor Holton states that
the amount of free stearic acid determined by him from analysis
of “Thornberry record formula 13 with carnauba” assuming the
amounts of the composition to be those given in Macdonald pat¬
ent No. 606,725, to be 122.5 pounds as against 122.4 pounds,
found by his' calculation of tiie. formula of that patent, and he
concludes (R-dQ. 153) that this coincidence in figures " is a prac¬
tical demonstration that there has been no such reaction” between
any free stearic acid and free alcohols in carnauba wax. Do you
agree with Professor Holton in this respect?
A. I do not consider that this coincidence in figures proves any¬
thing regarding the reaction of free myricyl alcohol in carnauba
wax and the stearic acidj because as I have stated before, even
assuming that there would be no loss of stearic acid, due to
vaporization, the value given in the calculated result might be
varied within wide limits by assuming various degrees of purity
of the ingredients. Then aside (from ' this, it was stated by Mr.
Thornberry that the composition in fpicstion was cooked for 13J/
hours. This long cooking at a high temperature would cause a
variation in the amount of free stearic acid of at least '5% of the
whole composition, or about 20% of the free stearic acid. Then,
if stearic acid were added to make up for this vaporization, the
amount added would have to be considered, and furthermore,
during the molding operations, there are slight losses of stearic
acid. Even assuming that there was no reaction, which is the
basis of Professor Holton’s assumption, we would expect a con¬
siderable variation in the amount of free stearic acid, where, on
the contrary, in his statement lie has identical or practically
identical figures with the two compositions. This coincidence
means nothing, and in ifact the entire calculation of Professor
Holton means nothing. There might be considerable reaction in
one case and no reaction in the other case, and it would be readily
possible to obtain the same figures in the two cases by simply
giving different values to the ingredients used as to their purity.
It would tie just as impossible to make a fair and accurate com¬
parison between a paper formula, such as that of the Macdonald
patent, and. a' formula derived from actual analysis, as to make
a comparison between either formula and the multiplication table.
Q. 262. Kindly consider patent to Miller, referred to bv Mr.
Cameron in R-dQ. 76, and state whether tins patent describes a
composition which would have any utility whatever in the molded
complainant's
:BUOTTAL
A. In the answer referred to Hr. Cameron states only a few
of the ingredients referred to in this patent and he does not
explain what the patent relates to. The Miller patent is a com¬
position for polishing shoes and not for making molded phono¬
graph records. Mr. Cameron also in describing this composition!
mentions as the first ingredient — bar soap, when as a matter of
fact, only 3 ounces of soap are used as against 10 pounds of
paraffin, 6 pounds of stearic acid, four pounds of bees’ wax, two
pounds of ivory .black) pounds of lamp black, three ounces
IO of gum-dammar, ten ounces of sugar, one-half gill of alcohol, and
one-half gill of turpentine. In other words, the amount of soap
used is about 1 % of the entire composition, whereas, with a com¬
position suitable for the molded record art, the proportion of soap
is about 76%. Bar soap is of no utility in this art, being in the
first place a hydrated soap, and in the second place, an olcate,
which is very largely hygroscopic. One of the things we have to
avoid is the presence of any- considerable percentages of any olcate.
The composition disclosed in this patent is comparatively soft,
much softer than the blank composition, and could not be used
20 successfully for making molded records. Mr. Cameron seems to
have some doubt whether the composition of the Miller patent
may not have a boiling point as high as 450 to 475° F. As a
matter of fact, the boiling point would be that of the most volatile
ingredient, which is the alcohol, and this boiling point would be
less than 200° F.
Q. 263. Have you read the deposition of Professor Charles E.
Munroe herein ? A. I have.
Q. 264. Kindly consider the patent to Hart, No. 41 8,94 7, re¬
ferred to by Professor Munroe in answer to Q. 8, and state
3'o whether this patent describes a composition suitable for use in the
molded record art.
A. It does not. It describes a composition for crayons, con¬
sisting of carnattba wax, stearic acid, and paraffin, in substantially
ccptal proportions, and a suitable coloring pigment, tlfe ingredients
being- melted and molded into the form of crayons. Such a com¬
position would be much softer than, the blank composition and
would not be commercially molded. As a composition for the art,
it would be far inferior to the blank composition.
Q. 265. Having reference to Macdonald reissue patent No.
40 12,095, and assuming that it were attempted to make molded
records from a composition of stearic acid and ceresin, would the
effect of suddenly chilling the record cause the harder ingredient
. to predominate at the surface, as described therein, to form a
JONAS W. AYLSWOKTII
"casting whose exterior surface is much harder and , denser than ;
its mass" (p. 2, lines 15-16). ’
A. No, it would not cause the harder ingredient to segregate
and collect on the chilled surface. That is an entirely erroneous
- idea ; on the contrary, suddenly chilling of mixtures of molten
substances generally tends to prevent the segregation. What
actually does take place is that the sudden chilling renders the
surface less crystalline for a short depth only, but this is true
of all molded records, no matter what the composition is. It is
true of stearic acid alone. 10
Stevens Institute, I-Ioiioken, N. J.
Monday, March iS, 1967. j
Met pursuant to adjournment.
Counsel present as before.
The witness JONAS W. AYLSWORTIl is recalled for the
put pose of cioss examination in accordance with arrangements
previously made between counsel.
CROSS-EXAMINATION by Mr. .Massie:
xQ- 266. I call ybur attention to your answer, to Q. 243. in 20 :
this answer you say the Columbia records copy the phonograph
records of complainant in appearance so closely that except for
the name on them it is almost impossible to tell them apart.
Phonograph records are of a homogeneous composition as dis-
tinguishehd from a paper tube having a waxy coating thereon
are they not? A. They are.
xQ. 267. They have an internal taper, instead of a true cyhn- j
drical bore and they have internal ribs instead of, a smooth sur- i
face have they not? i
, /(..The phonograph records have an .internal taper of 'bore,, 30
with concentric parallel ribs.
•r0. 268. Do you know whether or not these features, are, or
at least purport to be, covered by patents owned by the Edison
interests; I refer to the fact that the composition is homo-
geneous instead of being spread on a paper, tube, that the cylin- .1
ders have a tapered bore and have internal ribs.
. Counsel for complainant admits that except for
the composition used by -defendant, and the process 1
employed by defendant in the manufacture iof the rec- • •
ords, up to the present time no claim for infringement- 40 . >|i
of any other patent is made. j
Defendant’s counsel proposes to show that the de- ' ;i:
. - - . . fendant has the benefit ot a license under the patent -’■■■ J
37 NEW
complainant's rebuttal
290
referred to, and therefore will object to question 243
and the answer thereto as irrelevant, immaterial arid
■ tending to mislead the Court,
Complainant’s counsel replies that it is now too
late for the defendant to raise any question pf license
in this case and that no question of license is set up
in the answer.
xQ. 269. I11 answer to Q. 45 you refer to Edison Patent No.
400,648, and say that the composition of this patent, so far as
io you know, was not used practically. Do you know whether or
not any composition consisting of stearic acid and ccresin was
ever used practically for the purpose of phonograph blanks or
phonograph cylinders?
A. No, I do not know of that particular composition hav¬
ing been used practically for phonograph blanks or for any
pther form of phonograph cylinders. This answer refers to all
the compositions mentioned in this Edison patent.
xQ. 270. So far as you know, during the period between the
date of the Edison patent just referred to. No. 400,648, and
20 the date of your Aylsworth patent here in suit, was there any
soap composition in general use, or in common use for the pur¬
pose of phonograph cylinders, consisting of stearic acid and
cercsin alone with no other ingredient present? ;
A. The question as you liavc stated it. is not clear. You
speak of stearic acid and ccresin alone as being soap compo¬
sition; this would not be strictly correct; there was, however,
.between those dates, in general use, a soap composition con¬
taining stearic acid, soda, alumina and ceresin. This is a blank
composition, practically identical with that which is used today.
30 Adjourned until Tuesday, March 19, 1907, at 10:30 o’clock
A. M. at the office of defendant’s counsel, Tribune Building,
New York City.
Office op. Philip Mauro, Esq.,
Tribune Bldg./ New. York City.
• Tuesday, March 19, 1907.
• Met pursiianf to adjournment.
’ Counsel present as before.,
1 4° JONAS W. AYLSWORTH. . • /
CROSS-EXAMINATION resumed. ,
xQ. 271. In question . 250 after giving Story-Maskylcnc’s
figures for the free myrjcyl alcohol which he thought lie found,
JONAS W. AYLSWORTH.
291
you say “This was confirmed by Sturcke.” What percentage of
free myricyl alcohol did Sturcke find?
A. Sturcke did not sum up his results and give, percentages,
but from Iiis figures of the soluble portions of the extracted por¬
tion, by hot alcohol, given in his article I calculate that there
must be at least 31% of free wax alcohol. Sturcke states
“Furthermore it is demonstrated by the above de-
, terminations that free alcohol even in considerable
quantity, is contained. therein.” -
Operating on 1957 gramrns of the raw wax by extraction 10
with hot ethyl alcohol, Sturcke obtained 60.04 Per cent. of ex¬
tract ; this extract which he obtained, while it does not necessarily
. represent a completion of the extraction of all matter that might
be soluble in hot alcohol, yet would contain the greater portion of
all of the free alcohols existing in the wax together with smaller
proportions of the esters, which lie states, in this same article,
are soluble only to a very slight extent in boiling alcohol. By
this treatment he gets a residue after extraction, and an extracted
. portion. The insoluble residue must necessarily contain by far
• the greater part of the esters which arc in carnauba* and the 20
extracted matter must contain by far the greater portion of the
free alcohol. Then he operates on the residue by saponifying it
by prolonged treatment with alcoholic potash, ■ thereby decom¬
posing all of the esters which it contains and setting free the
alcohols which existed in it, in combination. Then, after care¬
fully drying this soap formed from the acid that was in the ester,
and the alcohols which were combined with cerotic or the other
acid to form the ester, he extracts this material; lie thereby
obtained 51.1 per cent, of extract which, represents a fair measure
of the alcohols which were in combination in the ester in this 30
particular residue. Then operating in the same manner upon
the extract matter obtained from the raw camauba wax lie ob- 1
tnined 78.4% of extract. This, figure represents the free alcohol
that was contained in the wax together with a smaller amount
of alcohol which existed, in this original extract in combination
with acids in the form of esters, which, as he has stated in this
article, were slightly soluble in hot alcohol,. While operating on
these large amounts by extraction will, give a fair indication of
the composition yet they are not exactly quantitative and the
deductions that can be drawn from them, would only indicate the 4?-
minimum amount of free alcohol. If the extraction were perfect
then the result could be accepted as quantitative. ..Since he .
• obtains an extract amount front the original alcoholic extract
292
T’s REBUTTAL
after saponification, which he has given as 78.4% of total alco¬
hols from the extracted matter that was soluble in the hot
alcohol, therefore that contained practically all of the free alcohol
existing in the wax together with a smaller amount of alcohol
which existed in the original extract matter as an ester, this
ester being slightly soluble in the hot alcohol.
To arrive at an approximation of the amount of the free
alcohol that was originally present in the carnauba wax, it will
be necessary to know bow much. of the alcohol compound in this
10 78.4% was derived from esters. To this end we take the part
which did not dissolve in the hot alcohol and which, after
saponification to liberate the total alcohols contained in it, gives
11s 54.1% of extract. This 54.1% of extract can be nothing
else but the alcohols and whatever traces of hydrocarbons may
have been present in the material.
In this case, as well as in the other cases, where the saponified
substances is extracted, the solvent used is petroleum ether,
which solvent dissolves the alcohols and hydrocarbons but docs
not dissolve the. potassium or sodium soap combination of the
20 acids. Therefore this residue, of which 5 4 ■ 1 % was extract
matter, gives a fair estimate of the total alcohols present in the
esters contained in carnauba wax. That would leave 45*9%
acid.
Then, by simple proportion, we can figure bow much of the
78.4% of extracts, which I have mentioned before as containing
the total free alcohols together with the smaller amount of alco¬
hols derived from esters, was ester, in the following manner, the
result of which will give 11s a fair estimate of the minimum
quantity of free alcohols in the wax: We take 78.4% from 100;
38 this gives 21.6% of acid occurring iit the part soluble in alcohol;
then 51.1% were found combined in the residue with 45.9 of
acids ; therefore, by proportion, there should have ibeen com¬
bined with the 21.6 of acids, that were present in the parts soluble
iit alcohol, 25.4 of combined alcohols; that is to say, alcohols in
combination with the 21.6 of acid.' Adding these two sums to.-
gether we get a total of 47% of esters iit the extract matter.
' Then deducting from the 78.4 of alcohols obtainable from the
part soluble: in hot ethyl alcohol gives 31.4% of alcohols that were
hi a free state in the original wax.
46 These figures, of course, are not exactly, quantitative, but they
. indicate that the wax must .have contained at least that much free
wax alcohol.
Defendant’s counsel desires further study of this an-
JONAS W. AYLSWORTH.
293
swer before being able to cross-examine on it, if that
can be done at all.
xQ. 272. Are we to understand that your conclusion that
Sturckc’s investigations indicate about 31% of free alcohol in
carnauba wax/ depends upon the line of reasoning just set forth in
your aiiswer?
A. As to the figures of the minimum amount, that line of
reasoning set forth in my answer would indicate that there is at
least 31% of free alcohol in the carnauba wax. There are other
references in the article in which he states that there undoubtedly :
is a considerable per cent, of free alcohol in carnauba wax, but I
find no other figures from which any approximate estimate of
the amount could be obtained.
xQ. 273. But your conclusion depends upon the reasoning set
out in the long answer just given? •
A. As to the approximate figures of the free alcohols it docs.
I, of course, refer to Sturcke’s article.
xQ. 274. I show you that particular portion of the translation
of the Sturcke article which I quoted in..vQ. hi propounded to
Dr. Stillman. Do you understand that in the proceedings there
described the carnauba wax was dissolved in alcohol ?
A. No, in the proceedings there described the saponified ma¬
terial is extracted with petroleum ether.
x Q. 275. With what do you understand the wax was “directly
saponified”? A. By alcoholic caustic soda.
x Q. 276. What is the meaning in this connection of the phrase,
“separated with salt”; what was separated and how was this
done?
A.' In soap, in order to separate the same from excess of alkali,
the operation' of salting out is employed. This will separate the
soap, and other fatty bodies contained in the same, from the excess
of alkali and from the solvent which is contained in the soap. In
this case, the operation of salting out removes both the excess of
alkali and the alcohol which was used as a solvent, for that alkali
during saponification.
XQ. 277. .It was the soap that was “dried” after the separation
with salt? A. It was the soap and alcohols mixed therein; ’
xQ. 278, What substance "or. substances diid.Sttircke dry?'
A. He dried the total saponified mass consisting of the soda
soap and of the acids in the material which he saponified together
with the alcohols that were contained in the same.
■ xQ." 279. “And then the dry soap (was)' extracted.” How
was the dry soap extracted, 'and what was left? '• '
• 29,4 COMPLAINANT'S KKBUTTAL PROOFS.
A. The dry soap was extracted with petroleum ether; in this
article I do not see any description of the exact apparatus used.
There are a number of methods that are used for carrying on this
process, the principle involved in each is that, first, solvent is
supplied to the material which carries away the portions which
are soluble in the solvent, and this is repeated a sufficient number
of times to more or less completely remove ail of the matters
soluble in the particular solvent used. This would leave a residue
consisting of the soda soap of the acids contained in the matter
io originally. This original matter in this case, as mentioned on
page 7 of the translation of Sturcke’s article, was that part of
the cqrnauba wax which hint remained unsolved in hot ethyl alco¬
hol during the treatment of the original raw wax ; and therefore
these acids would represent the acids combined in the esters
which occur in the carnauba wax.
xQ. 280. If I understand your attitude, where the Sturckc
article says “The wax was directly saponified,” do you con¬
sider that the term “the wax” does not mean carnauba wax,
but merely that portion of it which had formerly failed to dis-
20 solve in the hot alcohol ?
A. In the part which I have just referred to in my previous,
answer Sturcke mentions that the part of carnauba wax which
had remained unsolved m alcohol was converted into soda soap
and extracted. Further down on the same page he states—
“In the experiment with a second and third quantity of wax
the digestion with alcohol was left out. The wax was directly
. saponified and then separated with salts dried, and the dry soap
extracted.” This refers to an additional experiment.
xQ. 281. And it was this additional experiment which is set
30 out -in xQ. hi propounded to Dr. Stillman; in other words,
the substance dealt with in the experiment there . inquired of
was the carnauba wax and not some undissolved residue?
//. The amounts given in the answer to xQ. m do not, as I
take it, represent either one; they represent the combination of
the residues unsolved in hot alcohol, and two fresh portions of
the raw . carnauba wax saponified, amounting , in all to 2800
gramms, froni which he obtains 1,559 gramms of . alcohols’ -for
purposes of fractionating, in order to study their nature. There .
is nothing quantitative about it because he states that in the
40 experiment with the second and third quantity of wax about
800 gramms of the original wax, which was not digestive with
alcohol, was used. That second and third portion together
would amount to about 1C00 gramms, which, together with
the other soaps obtained from previous saponifications,
amounted to 2800 gramms. I11 this particular part of the
treatise he is dealing with the substance extracted, which, by,
the treatment, would be the alcohols and hydrocarbons contained
in the Original wax, in order to get a large quantity for the
purpose of fractionating and identifying various bodies con¬
tained in the same. I11 order to perform such fractionating ex¬
periments it was necessary to have a very large amount and
for that reason Sturcke has evidently combined all of bis ex¬
tracted matter including that from raw wax and that from the 10
residues after alcoholic extraction.
xQ. 282. That is to say, according to your views, Sturcke
got about 1,550 gramms of the alcohols and hydrocrabons out
of about 2800 gramms of material, and this material consisted .
of practically three batches, namely, one consisting of some
S50 gramms of the ester residue and the other two constituting
together aboiit 1600 grams of the crude carnauba wax?
A. That is my interpretation of it.
xQ. 283. A11 interpretation of what Sturcke means' is of
course for the Court. If we assume that Sturcke's article 20
means that the 2800 gramms was the original carnauba out of
wlijch lie obtained .the 1 550 gramms of alcdhol and hydrocar¬
bons, this would indicate tile presence of about 55% of the
al.cohols in the wax. would it not?
A. If we assume that, I think your figures are correct; but it
is expressly stated in summing up bis work on page 3 that
out of 1,935 gramms of the part insoluble iii alcohol he got
1,048 gramms of extract amounting to 54.1%, and judging
from that I would say that your assumption in the question is
not correct. ' 30
xQ. 284. “The part of the carnauba wax which did retrain
unsolved in alcohol, about 850 g.’’ etc, wouid represent the resi- .
due from what number of gramms of the original carnauba?
A. The amount solved but of that body "was about 60%.
xQ. 285. In studying this matter arid giving your testimony,
did you take into consideration the fact that the language' en>
ployed is this, namely: “The total extract quantity, from- the
total quantity of carnauba max treated (altogether S;8ob g.)”
A. I do not consider those figures as representirig the total •
amount of carnauba wax treated, but that they refer' more es- ‘40
pccially to the carnauba wax and the residue prepared' in this
particular part of 'the experiment, because it is stated at the
beginning of the article that in one case, 1,931 g: arid iri andtlibr
complainant’s rubuttai.
1,957 gramms of original carnauba wax were- used, and fur¬
ther on it is stated tiiat two lots of 800 gramms each of original
carnauba wax were used, thus making a total of 5,488 gramms,
which does not correspond at all with the assumption that 2,800
gramms represents the total amount of original wax treated.
xQ. 286. The paragraph which you have just referred to as
being near the beginning of the article begins, does it not as fol-
“In order to obtain information about tbc part of
.10 the carnauba wax dissolved in boiling alcohol, as well
as about the part' which was not dissolved, carefully
weighed quantities (about 2 g.) of the raw carnauba
wax and of both tbe dissolved and undissolvcd parts
thereof were saponified,” &c. _
He is dealing with carnauba wax obtained from an English
drug store and some obtained from a Dresden drug store; and
after that follows the. table in which the figures as given in this
translation of the material obtained from tbe German stoic
appear to be 1,931 g. ; of the material obtained from tbe Eng-
20 lish store, 1,957 S- I that the material 'soluble in alcohol is 1,939
g. and that insoluble in alcohol 1,935 g-1 does it not appear
to you that the comma in these last four figures is a mistake
for the decimal period, so that the amount employed .in each
. of the four tests was stated before to be about two gramms in¬
stead of about two thousand gramms ; and is it not also the fact
that in German the diacritical mark which we call a comma is
the decimal point?
Before answering this question I call your attention to a
paragraph a page or two further on in which Sturcke says that
30 in order to examine still further the solubility of tbe carnauba
wax “2,52 g.” of it was treated and of this there remained un¬
dissolved “0,98 g.” and a few lines below he gives the figures
“0,295 S-" 311(1 “0,286 g.”
A. In calculating the percentage of myricyl alcohol from these
figures tiie percentage given was taken as a basis, and not the
actual weight of the substances used. You are correct ; Sturcke
evidently meant , two gramms of the material or thereabouts. I
had 'not considered it as being the small amount, I considered
the amounts given as the larger amounts “1,931' g.,” not
4° regarding the comma as the decimal (joint. This, however, does
not affect the deductions , in regard to these figures, but it would
change my answer to xQ. 285 where'! referred to 5,488 gramms,
because in that answer I considered these figures as the larger
JONAS W. AYLSWORTII. 297
amounts. This interpretation of these weights actually used in
thls_ experiment, namely, .1.931 gramms, makes those figures
more quantitative than I had considered them when I was figur¬
ing out the 31% of myricyl alcohol. I .would think with the
larger figures there was no attempt made for quantitative deter¬
minations of the amount of free alcohol in them at all or as to the
total amount of alcohol; the larger figures referred to being the
2800 grams and the 1550 grams on page 8 of the translation,
where no decimal point is used. The object of Sturcke in mak¬
ing the experiments with the smaller amounts was to quantita¬
tively determine these points, whereas his object in operating on
the larger amounts was to produce sufficient of tbe alcohols to
investigate as to their nature. The saponification of these larger
amounts was most probably incomplete, whereas liis alcoholic
saponification of the small amount was probably more thorough
and complete. It is stated that these larger amounts, namely the
800 gramms of carnauba wax and tbe 850 gramms of the residue
which was not dissolved in alcohol, were converted into soda
soap; it does not say that they were converted into soda soap by
means of alcoholic caustic soda. This being the case I know from
my own experience that carnauba wax cannot be completely and
thoroughly saponified without the aid of alcoholic soda or potash;
by ordinary methods of saponification. Therefore any deduc-’
tions arrived at from these larger figures cannot be taken in a
quantitative way. The object of the investigator was to secure
large amounts to experiment on and for purposes of quantitative
• work he used tile smaller amount above referred to and which
was used by me in figuring out the, 31%; The investigator him¬
self has depended upon the result of his work on this smaller
amount for proof of the existence of free alcohol in considerable
amounts, because at the end of his work on this smaller amount
he makes this statement : • ‘
“The presence of free alcohol in carnauba wax can
consequently be doubted no longer.”
In addition, on page 4 of the translation he says
“Furthermore it is demonstrated by the above deter¬
minations that free alcohol, even in considerable qiianti-
, tics is contained therein.”
In view of this explanation I would answer xQ. 285 as fol¬
lows: I did not use in my calculations, where I got 31% from
Sturcke’s figures, the larger amounts mentioned in your ques¬
tion. These larger amounts were converted into soda soap and
■since he does not mention the tise in connection therewith, of
COMPLAINANTS RISE
BUTTAL P HOOPS.
alcoholic soda, I consider that the percent, of extract matter ob¬
tained on these larger amounts as of no value in any quantitative
deductions regarding carnauba wax. The object of the investi¬
gator in operating on these large amounts was. to produce suffi¬
cient of the alcohols to more completely investigate their nature.
xQ. 387. Your statement as to your views of Sturcke’s object
and purpose and as to your own deductions and conclusions are
objected to at this time as volunteered and unresponsive. But is
it now your opinion that when Sturckc reported the test winch he
sums up by saying the “total extract quantity from the total
quantity of carnauba wax treated (altogether 2800 g.) amounted
to about. 1550 g.,” he had not previously obtained some nineteen
hundred odd graiitms of the extract containing the ester?
A. I have already referred to the answer that would have to die
changed 011 account of the mistake as to the decimal point which
in a previous question you called my attention to. . i hat, of
course, would make the figures which I gave as the original
carnauba wax, amounting in one case to i,93i Bra 1 1,11
the other to 1,957 gramms, which added to the 1,600 gramms,
being the two lots of 800 each, made 5,488 gramms,. incorrect,
and I withdraw those figures in that answer. Regarding the ma¬
terial operated on whereby Sturcke gets a total of 1,550 gramms
’of extracted matter after the saponification, that material then,
I believe included the two lots of 800 gramms each and the 850
gramms of residue after the alcohol ' treatment which would
amount to 2,450 gramms. . The, original material from which lie
got the 850 gramms of residue by alcoholic treatment, was derived
from 1200 gramms ; and 850 gramms from 1200 would give 350
gramm , this amount would mean 2800 gramms of the original
carnauba wax. .This would appear to give a total of 1,500
gramms of alcohol from the 2,800 gramms of original carnauba
wax, but it by no means follows that that amount can be depended
upon as quantitative, because, as I have stated before, the two lots
of 800 gramms each were, riot actually weighed; he says ‘About
800 gramms”; and, furthermore in the saponification of these
materials there was not that attempt to make complete saponifica¬
tion that there -was when he operated upon the smaller amount.
Therefore I would not place any value on these figures as in¬
dicating the composition of carnauba wax in a quantitative sense.
1 .fQ. 288. .1 believe I understand your position to be that m
this experiment Sturcke had altogether 2,800 gramms of car-
. nauba Wax from which lie obtained 1,550 gramms of alcohols and
hydro carbons, or about 55% ; but you think if he had saponified
JONAS W. ■ AYL.S WORTH.
299
with the alcohol solution and had completed Ins saponification
and had taken greater pains he would have obtained a higher per¬
centage of the alcohols and hydro carbons ?
A. 1-Ie would have obtained a higher percentage, and lie actu¬
ally did obtain a much higher percentage in the more careful
experiment where he operated on the small amount; he there ob¬
tained by the extracting of that alcohol, 60.04 Per cent- °f ex‘
traded matter, which extracted matter itself consisted of 78.04%
of alcohol, and which residue, after the alcoholic transaction,
gave 54.1% of alcohol. In other words, taking the sample of
English wax whereby Sturcke gets 60.04% °f extract soluble in
hot alcohol, disregarding the fraction which amounts to only '/ „„„
that would leave 40% of residue; after the complete alcoholic
saponification and extraction of the alcohols, Sturcke obtained
78.04% of alcohols from the extracted portion ; or, in other words,
lie obtained 47% of alcohols in thq extracted portion; that is
47% of the 60 per cent, he found was alcohols. Then, in the
residue, which was not soluble in water, he found 54.1% of
alcohols; 54.1 per cent.' of 40%, the 40% being the residue not
soluble in alcohol, gives 21.6 per cent.; this added to the 47%
gives 68.6% total alcohols found in the original wax in this ex¬
periment; that is, it gives at least this much. This of course
may be. slightly, low -because it is possible that the original alco¬
holic extraction was not carried to completion, as those opera¬
tions are more or less difficult and tedious to carry to completion ;
aiid, furthermore, it is known to-day that for the complete saponi¬
fication of these -waxes, like carnauba and bees wax, it is not only
necessary to heat them with alcoholic potash or soda, but to heat
them with alcoholic potash or soda under slightly increased
pressure for at least two hours, and in Sturcke’s work there is
no mention as to how completely this work was done. Therefore
the figures lie has given and the figures that are deduced from the
figures which he has given, represent the minimum amount of
total alcohols contained in carnauba wax, and this minimum
amount, as I have before stated is 68.6%.
x Q. 289. I understand that you consider the particular state¬
ment of Sturcke, where lie finds alcohol amounting to 55%, as
being unreliable for two reasons, namely, first, because he .was
not intending to make a quantitative analysis and did not have
' that purpose in mind, and second, because his saponification was
not carried out with, an alcoholic solution; arc these -.the only
reasons? ;
A. I would judge anyone who was familiar with work of this
kind, as Sturcke must have been, would not attempt to operate
3oo
I.AINANT’s rebuttal proofs.
JONAS W. AYI.SW0RTII.
3°I
on quantities of such large amounts where he had to perform the
operation of extraction, which in this case was a twofold opera¬
tion of extraction, once by alcohol, in the original carnauba wax
and again by petroleum ether on the saponified substances.
, xQ. 290. Do you understand that this same test in which he
-says the total amount of carnauba was 2,800 gramms was one
single test or the aggregate of three separate tests?
A. The aggregate of three separate tests.
Adjourned until Wednesday, March 20, 1967, at 10 130 o’clock
10 A. M. at the office of Frank L. Dyer, Esq., Edison Laboratory,
Orange, N. J.
Edison Laboratory, Orange, N. J.
Wednesday, March 20, 1907.
Case resumed.
Counsel present as before.
The CROSS EXAMINATION of the witness JONAS W.
AYLSWORTH was resumed by Mr. Massie:
•20 xQ. 291.- Do you understand the earlier tests of the two
samples, one from England and one from Dresden, and of the
portion which was soluble and- the portion which was insoluble,
respectively, were each one single test only, or the aggregate of
separate tests?
A. I understand that these tests represented first two separate
In I he operated on 1.931 gramms accurately weighed, other¬
wise he would not have carried out to the third decimal, whereby
he got 61.6 per cent, of extract. Second, he operated on 1.957
30. gramms of English wax and thereby obtained 60.04% of ex¬
tract. Those two amounts represent the only portions of fresh
carnauba wax operated on under these quantitative tests. The
third and fourth amounts operated on, given on page 3 of- the.
translation, were not the original carnauba wax, but as he states,
1.939 gramms of the part soluble in alcohol and 1.935 gramms of
the part insoluble in alcohol. '
I take it that in the third and fourth experiments where he
operated on the extract portion of .the residue portion after
alcoholic separation, the substances which he used were those
4° derived from his experiments I and II on the raw carnauba wax
and that in order to obtain sufficient of these materials he made a
further separate quantitative experiment duplicating experiments
I and II, in which he used 2.52 gramms of carnauba wax and
boiled the same with 750 c.c. of alcohol, thereby obtaining 38.9%
of the insoluble portion and 61.1% of the soluble portion. This
experiment is a duplicate of the other experiment before referred
to and results in almost identically the saihe percentages. Fol¬
lowing this experiment he further acted upon 10 gramms of fresh
carnauba wax and repeatedly boiled it out with fresh quantities
of alcohol, one-half litre at a time and lie states that after the
ninth time he obtained 2.95 gramms of dissolved substance in
350 c. c. and at the tenth, practically the same amount, and from
these figures and from this experiment he concludes that the
ester is sohible in hot alcohol to that extent. This data, together
with the experiment where lie used 2.52 gramms, gives us an
additional method of figuring or calculating the total amount of
alcohol contained in the carnauba wax. •
When I made my answer to xQ. 272 I had not observed this
additional data.
By. summing up this data we are able to calculate the amount
of free alcohols and total alcohols contained in carnauba wax
in a different manner from that given in my previous testimony;
as follows: When lie operated on 2.52 gramms he got 38.9 per
cent, unsolved and there must have been dissolved in the 750
c.c. of hot alcohol 61.1%, and since not over 2.95 gramms of
ester dissolved in 350 c.c. of hot alcohol the solubility of the
ester in. hot alcohol would amount to .84 gramms per litre.
Therefore there would be in the neighborhood of 25% of ester
in the soluble part after extracting that hot alcohol. This leaves
36.1% for free alcohol. This percentage approximates that
obtained in the other calculation and gives a further indication
of the amount of pure alcohol, while it is not as accurate as
the first calculation, because it is based on the solubility of the
. ester in hot. alcohol alone. This solubility might be influenced
one. way Or the other by the presence of larger amounts of
free alcohols which are present in the extracted; matter; but it
is a very close approximation and agr.ees quite favorably with
the other calculation and agrees quite -favorably with the other
calculation.
After making this experiment Sturcke states:
“The ester characteristic and the- presence of free
alcohol ip carnauba wax can consequently, be -doubted-
no longer,”
I take it that Sturcke treated those .2.52 gramms in the same
manner as he did tile original 1.191 gramms, for the purpose of.
giving him sufficient quantity, of residue insoluble in alcohol,
302 complainant’s rebuttal proofs.
ami extract matter soluble in alcohol to perform the quantitative
' tests III and IV given on page 3 of the transslation, which I
have referred to in nly. answer to xQ. . If we calculate the
result of Sturcke’s experiment when he uses 2.52 gramms of
carnauba we get about the same result its I have given in answer
to .vQ.271, namely, 30.3% of free alcohol, 37.7% of combined
alcohols, amounting to 68% total alcohol, which would leave
32% total acids or, in other words, 30.3% of free alcohols and
69.7% of ester. The quantitative experiments made by
10 Sturcke on these smaller amounts are reliable, but his experi¬
ments on the larger amounts are not quantitative, and no ac-
. curate quantitative deductions can be drawn from them.
My reasons for this statement tire as follows ;■ On page 5 of
Sturcke’s translated article he says that 1260 gramms of wax
was digested out in $'/, litres of hot alcohol ; in his original
quantitative work he used of a litre on 2.52 gramms. This
alone shows that if it was necessary to use so much alcohol in
the small amount it would be necessary on this large amount
to use a far greater quantity than 5 '/i litres. He further states
20 that the extract 350 gramms was saponified with 25 gramms of
caustic soda and the dry scivcd soap extracted by the petroleum
ether yield together, 250 gramms of extracted alcohol, which
equals 71.4% of the total matter extracted by the hot alcohol.
If ’this experiment had been quantitative be would have gotten
in this result the same figures as he did in the original quan¬
titative experiment with the smaller amounts, namely, 78.4%.
This difference is easily accounted for by the method of saponi¬
fying; he states that he saponified with 25 gramms of caustic
soda, not by alcoholic caustic soda ; then he took the nearly
30 converted extracted soap left, containing' the balance of 350
gramms of alcohol, extract matter obtained by hot alcohol,
amounting to 100 gramms or 28.60% and combined them with
the 850 gramms of the part of the 1200 gramms' of carnauba
wax which was not soluble in hot alcohol' and, after previously
converting it1 into soda soap, and extracting by petroleum ether
in the same manner as it was done with the smaller portion,
he further states that two fresh lots of wax of about 800
gramms each were' taken and saponified direct without previous*
extraction with hot alcohol; the soda Soaps from the same were
40 then extracted with petroleum ether the fresh wax portion and
the 850 gramms of the part insoluble in alcohol, altogether rep¬
resent 2800 gramms of carnauba wax from which he got a
total of 1500 gramms of wax alcohol, equal to 53-5%; this
JONAS W. AYLSWORTH. 3°3
much notwithstanding the fact that the wax was imperfectly
saponified with caustic soda, only the smaller part of the same
being done with alcoholic soda as was done in his quantitative
experiment referred to in the answer to xQ. , where the total
alcohols obtained from the wax were 68%.
In Sturcke’s article lie further states that:
“In order to separate tlje acids contained in carnauba
wax the soda salts of acids, that is wax soap, which
’ was left after' extracting with petroleum ether, was
digested with alcohol. The greater part of the soap
was hereby dissolved, then filtered while hot.”
From this experiment we are obliged to. admit that not all of
the soap was soluble in hot alcohol, while, if the original saponifi¬
cation and extraction had been complete and quantitative, this
soap would have been completely soluble in hot' alcohol. This
fact substantiates my opinion previously expressed in this testi¬
mony that the operations on these larger amounts were in only
a very limited sense quantitative.
Further, Sturcke states on page 9 of the translation that by
fractionating he obtained 45% of an alcohol having a melting
point of from 86 to 86.5 degrees C., corresponding to pure
myricyl alcohol. From this part of Sturcke’s work, which can¬
not possibly be quantitative, conic all these indefinite calculations
and statements. noted in some of the books in which descriptions
of carnauba wax are given.
All of the foregoing answer from and including the
words “He made a further separate quantitative ex¬
periment duplicating I and II” is objected to as volun¬
teered and not responsive. Any cross examination tliat
■ may touch on the matters now objected to will be with¬
out waiving the objection.
Defendant’s counsel further notes that as this ex¬
amination is being taken stenographically it will be
’ necessary to read the transcript of the foregoing answer
before the cross examination thereon, if any, can be
made.
xQ: 292. Without waiving the objection just made I will ask
you to point out the page in. the translation in which Sturcke says
lie made a further' separate quantitative experiment duplicating
tests I and II?. . •/.• ■' r ;'':-
A. On page 5 of the translation Sturcke says
“I11 order to examine 'still further the solubility Of the
carnauba: wax, 2.52 gramms of it were boiled for a
304 complainant’s rubuttat. proofs.
longer period with 750 c. c. of alcohol. Of this there
remained undissolved 198 gramms, equal to 38.9%. ’■’
Stiircke does not specifically state that this is a duplicate, but
lie treats it In the same manner as he did the lots I and II and.
therefore it is a duplicate.
xQ. 293. What I am getting at is this, do you understand that
the 1,993 grams of the subcstancc that was soluble in alcohol,
which formed the basis of experiment III, and the 1.935 gramms
of insoluble substance, whatever it was, that formed the basis of
10 test IV, both referred to on page 3, were obtained from the test
you have just now cited from page 5 which was made “in order
to examine still further the solubility of the wax” ?
A. I would interpret. from Sturcke’s article that he had derived
his material, that is the insoluble part and the part which was
soluble in alcohol, from either a combination of those contained
in I and II on page 3 or the materials lie obtained in the further
experiment. I infer this because the materials that are given in
III and IV on page 3 are more than those obtained by the extrac¬
tion by hot alcohol in I and II, and it logically follows that he
20 would want to operate in this experiment on at least about two
gramms, since he had used that amount in the first two experi¬
ments; and in order to do so it would be necessary for him to
extract fresh portions in the same manner as he did in I and II,
which he did, as indicated on page 5.
xQ. 294. If I understand you, you assume that before Sturcke
could complete the tests with the “carefully weighed quantities
(about 2 g.) of the raw carnauba wax and of both the dissolved
and undissolved parts thereof,” he had to at least begin the tests
recited on page 5 which he undertook “to examine still further”
30 the subject.
A. I understand from these results that since he mentioned in
III and IV that he used iii the one case the part soluble in alcohol
and in the other case the part insoluble in alcohol and since lie
used 1.139 in one and 1.935 in the other that it was necessary
for him to extract a greater amount to. produce these amounts
than he had used in I and II, because the yield, from these experi¬
ments was altogether somewhat over two gramms of the ex¬
tracted portion and only 1.5 gramnis of the insoluble part.. There¬
fore,, since he used in the experiment IV, 1.935 gramms it was
40 ncessary for him to produce more of this insoluble part in order
to use that weight.
xQ. 295. In speaking of that test which resulted in giving 1550
gramms of alcohol from 2800 gramms of the cqrnauba, in an- ,
JONAS W. AYLSWORTII. 3O5
swcr'to x Q. 275 you say the saponification was made "by alco¬
holic caustic soda,” whereas, further on (xQ. 286 and xQ. 289)
you say that it was not made by an alcoholic solution. Why did
you assume in the first instance .that it was so made and why did
you assume afterwards that it was not so made?
A. I11 my answer to xQ: 275 the statement as to the alcoholic .
caustic soda is correct, the alcoholic caustic soda was not actually
used, that is, he added 25 gramms of caustic soda to the alcoholic
solution of the wax, and in that answer I referred to that portion
of the material. I11 the answers to the other cross questions you 10
have mentioned this material together with the fresh quantity of
wax which was not treated with the alcohol previously, was, as
stated by Sturcke, converted into sodium soap direct, from which
I infer that in this first portion there was no alcoholic soda
saponification at all. So that, more correctly speaking, of this
whole 2800 gramms of carnauba wax, whereby were produced
I5°° gramms of alcohol, only the small portion of the extracted
material produced by the alcoholic separation was saponified by
the alcoholic caustic soda; but I understand from Sturcke’s
article that the residues from this alcoholic separation together 20
with the fresh portions of 800 gramms each of carnauba wax,
were directly saponified by caustic soda without the aid of alcohol.
xQ. 296. In answer to xQ. 271 you quote Sturcke as saying
that the esters existing in the wax are soluble only to a. very
slight extent in boiling alcohol. Lewkowitsch says, does lie not,
•on page 872 that:
“Carnauba wax. dissolves completely in ether and boil-
ing alcohol ; on cooling a crystalline mass of the melting-
point 105 degrees C., is deposited from the alcoholic
' solution”? _0
A. Lewkowitsch states that carnauba wax dissolves completely
■in ether and boiling alcohol ; from tliat I would interpret that
he means a mixture of ether and boiling alcohol.
And lie further states :
“On cooling, a crystalline mass of the melting-point of
105 degrees C. is deposited from the alcohoiic solution.”
Judging from Sturcke’s experiment I will consider that Lew¬
kowitsch obtained by this .solution, if lie used sufficient of the
boiling alcohol, and ether, a solution consisting of free alcohols
and the esters contained therein and if it separated on cooling, or 40
deposited on cooling, a crystaline mass that would, if the solvent
was boiling alcohol alone, separate a mixture of. alcohols and
esters, but if the solvent was a mixture of ether and- boiling .
the subject states that in cold alcohol, rnyncyl alcohol is practi¬
cally insoluble, but freely soluble in hot alcohol, whereas the esters
that occur in carnauba wax, as demonstrated by Sturcke are only
soluble, to tbe extent of .8 gramms pel-litre in hot alcohol. With¬
out having the definte quantity of the solvent given any definite
■ statement as to whether, the crystalline mass represented all ma- ,
terial contained in the solvent, I would not be able to more than
:o guess on tbe nature of that paraticular crystalline mass mentioned
by Lewkowitsch on the quotation made in your question.
xQ. 297. Do you assume that in tbe passage I just now
quoted front Lewkowitsch he mixes cold ether with boiling
alcohol and if so in what proportions do you assume he took •
those two solvents ?
A. We cannot assume any proportions.' I11 cases where a
mixture of etherand alcohol is used the proportions may vary
within wide limits and I would infer that he mixed the two to¬
gether and boiled them; the boiling could not refer to boiling
to alcohol and not boiling etlier.
xQ. 29S. I put it to you that the position of the adjective
“boiling” indicates that Lewkowitsch means either ether alone
or boiling alcohol alone ; otherwise lie would have, said “boiling
alcohol and ether” ; what have you to say to' that suggestion ?-.
A. It might be interpreted as meaning ether or it might be
interpreted as meaning boiling alcohol or it might be interpreted
as meaning ether and boiling alcohol, meaning in the latter case ;
the two solvents combined in a boiling state.
xQ. 299; If the Court should interpret this, 'passage as mean-
30 ing that according to Lewkowitsch lie found carnauba was easily
soluble in boiling alcohol alone, how Would you reconcile that
■ with Sturcke’s contrary report of his investigation; i , : ,
A., The two statements absolutely cannot be' compared be; ■
cause Strttcke m Ills paper gives definite .amounts of the sojvcnts
which lie used and the results therefrom. This statement of .;
Lewkowitsch gives 116 amounts and lie might have used a barrel
of alcohol amb dissolved a gramm of the substance.'
. xQ. ipo. Do you tliiqk it probable that a man of science
enjoying the reputation which Lewkowitsch enjoys, if he rc-
40 quired a barrel of alcohol to dissolve a granim of substance
would state’ in: his text book as lie has stated that the substance
substance being carnauba wax.
xQ. 301. Do you tliihk it likely that if Lewkowitsch, in ordei
to dissolve carnauba wax “completely,” had to' employ a verj
large quantity of the solvent he would content himself with tin
• simple assertion that the substance dissolved completely in that
solvent without explaining that a large quantity of the solvent
must be used?
A. I11 determining, matters of solubility by chemists there is
always used a very small amount of the substance in a relatively
large amount of the solvent where, the substance is only sparingly
soluble and I consider that since Lewkowitsch makes the state¬
ment that the free myricyl alcohol contained in carnauba wax
is easily removable by cold, ethyl alcohol, he might also make
other statements that were not properly' considered or in which
he is entirely mistaken. A quotation has been given in the testi¬
mony in this case regarding tbe solubility of myricyl alcohol
which was' taken from the very latest work, in German, on the
subject, which makes the definite statement that myricyl alcohol
is practically insoluble in cold alcohol., Since Lewkowitsch
stated that it could be easily removable by cold ethyl alcohol
all of his statements regarding ' the constitution of carnauba
wax could very readily be in error, because if lie believed that
myricyl alcohol was removable by cold ethyl alcohol by treat¬
ing carnauba wax thus, he would not remove the myricyl alcohol,
and therefore his conclusion that it contained no myricyl alcohol,
based on this belief, would be wrong. '
.vQ1. 302. -Comparing the passage you have just cited front
Lewkowitsch -with the one I quoted a while back, in the latter
Lewkowitsch says that the entire carnauba composition is com¬
pletely soluble in' “boiling alcohol”; in the former passage lie
flames the three ingredients, cerotic acid, myricyl cerotate and
myricyl . alcohol, and says the last named is easily removable by
cold ethyl alcohol. Might- not this mean that the two first named
ingredients are soluble .in cold . alcohol, while the myricyl alcohol'
is not soluble and therefore can be separated out.
: A. Not at all; ; The language of Lewkowitsch’s book at page
308
When he speaks of the latter, according to my interpretation
of the grammar, lie means the free cerotic acid and the myricyl
alcohol.
xQ. 303. That is, he takes these two subjects for the singular
form of the verb, namely “is,” instead of saying “the latter are
easily removable”?
A. No, strictly speaking I should say, on account of the singu¬
lar verb, that he meant the myricyl alcohol, and that the mycyl
alcohol would be removable by the use of cold ethyl alcohol and
10 from my knowledge of these substances I know that it could not
be the converse of this, that the myricyL cerotate would be re¬
moved by its solubility in cold ethyl alcohol, because even in hot
ethyl alcohol, the myricyl cerotate is only soluble to the extent
of eight-tenths of one per cent.
x Q. 304. Sturcke discovered, did he not, a hydroxy acid pres¬
ent in carnauba wax which is cited by Lewkowitsch on page 874?
A. He did.
\ xQ. 305. Will you please give the combining weight of this
20 A. I have figured the combining weights; the acid which
Sturcke in his article calls dicarboxyhc acid, he mentions as one of
the components of carnauba wax, Sturcke also gives a hydroxy
acid; this I have not figured the combining weight of. The
combining weight of the dicarboxylic acid mentioned by Sturcke
is 168. The presence of this acid would account for the high
saponification number given by Lewkowitsch, as, if the carnauba
wax contained for instance 10 per cent, of this acid, it would be
sufficient to give' carnauba wax a saponification value of 33.3 ;
the saponification of this dicarboxylic acid being 333 approxi-
•30 mately. This acid, in addition to the hydroxy acid mentioned
and the lignolceric acid would make it impossible to calculate
from saponification values the cerotic acid in carnauba wax; it.
would only be possible to use for the saponification value the
calculations, if we knew the exact amount and nature of each
acid present, in the substance.
All of the foregoing answer that refers to “dicar¬
boxylic acid” is objected to as; volunteered and not re¬
sponsive.
xQ. 306. In the translation of the Sturcke article at next to the
40 last page he says does he not
“Finally I will give a recapitulation of the. sub¬
stances demonstrated in carnauba wax.
JONAS W. AYES WORTH, ‘309.
. 7. An acid (giving its formula), an oxy-acid, or
possibly its lactone (giving its formula) with a melt¬
ing-point of 103.5 degrees; front this the dicarboxylic
acid (giving its formula) with a melting-point of 90
degrees, was produced” ?
A. Yes, that is correct.
xQ. 307. And on page 874 Lewkowitsch refers to this as
“A hydroxy acid (giving the. first formula given by
Sturcke) or its lactone, (giving the second formula
given by Sturcke)”?
A. That is correct.
Adojurned until Thursday, March 21, 1907, at the office of
Frank L. Dyer, Esq., Edison Laboratory, Orange, N. J., at
10:30 A. M.
Office op Frank L. Dyer, Esq., Orange, N, J.
Thursday, March 21, 1907.
Case resumed pursuant to adjournment.
Counsel present as before. 20
The CROSS EXAMINATION of the witness JONAS W.
AYLSWORTH is resumed.
xQ. 308. Now will you please give us the combining weight '
of what Sturcke calls the oxy.acid and what Lewkowitsch calls
the hydroxy acid?
A. The molecular weight is 342. If this acid is monobasic its
combining weight is the same, 342. I think this is a monobasic
acid, this combining weight would give a saponficaton value of
164.
xQ. 309. In answer to xQ. 305 did you assume that in the 30
language quoted in xQ. 306 Sturcke meant to say that the dicar¬
boxylic acid existed as such in the carnauba wax ? -;
A. Sturcke mentions this acid in the list of substances which .
he found, and identified as present in carnauba wax and on that
account I considered it to be present in the wax, but on looking
back through his article J find, that he produces this dicarboxylic :
acid from another substance in order to identify the nature of the
other substance, so that this acid does not apparently occur in
the carnauba wax itself. ■
xQ- 3101 The apparently high saponification value given by 40
Lewkowitsch has been cited in this case as contradicting Lew-
kowitsch’s statement as to the smallness of the amount of myricyl
alcohol present in carnauba. Would the presence, of this hydroxy
.acid tend to reconcile the two statements by Lewkowitsch?
310 COMPLAINANT'S HEnUTTAl, PROOFS,
A. The presence of this hydroxy acid, also of the. various
. other acids, found by Sturckc, also of the various alcohols found
and identified by Sturckc, together with the possibilities of other,
bodies in carnauba wax, not identified by Sturcke, would account
for the high saponification value, and for the discrepancies which
are apparent when figuring the acid contents of the carnauba
wax front this saponification value, and for the discrepancies
between the statements by Lewkowitsch of the very small per¬
centage of free myricyl alcohol and by others of the large per-
10 centage of free myricyl alcohol.
On account of the combining weights of these numerous
bodies it is impossible to figure with accuracy either the acid
contents of the wax, or the alcohol contents of the wax when
using the acetyl value and the saponification .value. In all such
figures there has to be assumed that the acid is some particular
acid, or the alcohol is some particular alcohol, and unless this
assumption is taken, which of , course is only an assumption,
since we know that carnauba wax consists of a variety of sub¬
stances, there is no way of arriving at accurate figures of the
20 total acid contents, or the total alcohol contents, except by the
; deductions which are drawn from Sturcke’s quantitative tests
before testified to in this case by me as I, if, III and IV, and the
next succeeding experiment after these four. Of course, if the
exact percentages of the various bodies were known and their ■
exact formula and acidic properties, or basic properties in the
case of alcohols, then it would be possible to accurately figure the '
total amount of acid. But if we already knew these percentages
there would be no object in doing this. For, instance, the pres¬
ence, we will assume, of 1 6% of the hydroxy, which was referred
30 to in the 'previous answer, would account for a part of the high
sapom'fication value given by Lewkowitsch and others, also if
instead of the hydroxy acid the body were a lactone, or some of
' both, then that would affect the saponification value in the same
way. Likewise, on the other hand, the character of the alcohols
would affect the acetyl value and give a somewhat higher figure
in that case than would be the case if we considered these alcohols
to be entirely myricyl alcohol or these acids to be entirely cerotic
acid, which, in the previous calculations made by Dr. Stillman,
I understand was assumed. ->
40 Carnauba wax is a very complex substance; its entire compo¬
sition has never been accurately determined in every detail. But,
as to the questions involved in this suit, laying aside all ques¬
tions of theory and all calculations from formula:, the experi-
JONAS W. AYLSWORTII. 3II
ments made by Dr. Stillman whereby he obtained water, indicat¬
ing a reaction, and whereby he found that a certain quantity of
stearic acid disappeared in combination with carnauba wax, or
some part thereof, are, together with my own experience during
analyses and various experiments, and the quantitative' experi¬
ments given in Sturcke's translated article together with the
acetyl value given by Lewkowitsch and others, very conclusivie
proof to my mind of the presence of considerable quantities of
free myricyl alcohol in the carnauba wax, and that this myricyl
alcohol reacts in the manner set forth' in the patent.
■ xQ. 31 1. Please refer to Sturcke’s experiments I and II. on
page 3 of the translation ; I understand that if we consider these
as two parallel experiments, take the average and disregard the
decimal fractions; Sturcke found 60% of the carnauba wax to
be alcohols and 40% to be acids. Is that correct?
A. No,' that is not correct. My understanding of this is that
the experiments I and II represent the results of alcoholic ex¬
traction because he says after this experiment :
“Further verifications showed that the extract
quantity of the part dissolved in alcohol considerably
exceeded that of the raw carnauba wax and the latter
in its turn exceeded the extract quantity of the un¬
solved part.”
Then, on page 5, at the beginning of the next experiment on
. the 2.52 gramms, he says,
“III order to examine still further the solubility of
tile carnauba wax 2.32 gramms of it were boiled for a
. longer .period with 750 c.c. of alcohol; of this there
remained unsolved .98 gramms, equals 38.9 per cent.” •
Since this percentage corresponds almost identically with the
extract amount given in I and II, I believe that the interpretation
of I and II as being the alcohol extraction is correct, although it
might seem from the. printed descriptions, which' come before
these four experiments, to mean that these portion's of wax had
also been saponified with alcoholic soda. I' would judge more
by the reading of the experiment on page 5 of . the transla¬
tion as to the figures and as,to the amdtmt which was dissolved
in alcohol, than by the reading of the. printed matter which in
these German translations is not always, very clear.
xQ. 312. In. carrying out experiments I and II, which we will
consider the same experiment, Sturcke took “raw carnauba”
which we will assume to consist of three classes of bodies;
namely, free alcohols, free acids' and esters (consisting of com-
312 COMPLAINANT’S REHUTTAI. PROOFS.
bined alcohols and acids). What was the first step that Sturcke
article as just described in my .last answer I would judge that
the first steps would be to select the materials and powder them
and weigh them and then extract with hot alcohol in suitable
extracting apparatus.
■tQ. 313- After he has \<- gl e | 01 1 the a c ub 1 the first
thing he tells 11s he does is saponification with alcoholic solution
and caustic soda, is it not? A. No sir; he states that,
“Carefully weighed. quantities (about 2 g.) and the
raw carnauba wax
then there is a comma, after the word “wax”
and of both the dissolved and undissolved parts
thereof, in all four portions were saponified with the
alcoholic solution of caustic soda.”
lie says both the dissolved and undissolved parts thereof”-
since “both" can only refer to two, since he specifically mentions
the dissolved and undissolved parts thel-eof, I cannot see how it
can be interpreted that the raw carnauba was also saponified by
alcoholic potash, although I will admit that the wording is here
not very clean As I have said before, this is easily accounted
toi by the difficulties encountered in translating German.
-lQ- 3I4- As I have already noted, the interpretation of the
anguage is a matter for the Court, but' do you understand that
the four different bodies, namely, the sample of English wax
the sample of Dresden wax, the dissolved substance and th'c
undissolved substance, were all four of them saponified together?
A. No, I do not so understand it.
-T0. 315- Do you understand that each of them was taken as a
basis for a separate test, and that the first step in this test, after'
each body was weighed out carefully, was to saponify it with an
alcoholic solution of caustic soda?
A. No, I do not so understand it.
xQ. 316. Do you understand that a carefully weighed quantity
(about 2 g.) of the raw carnauba wax was not saponified with
alcoholic solution ?
A. Yes, I understand that in the cases of I and II they were
not saponified at all with alcoholic caustic soda.
AP'?17' PleaSe reacI int0 tho rccor<1 tlle Paragraph referred to.
A. (Paragraph read as follows):
“In order to obtain information about, the part of
the carnauba wax dissolved in boiling alcohol, as well
JONAS W. AVLSWORTir. 313
as about the part which was not dissolved, carefully
weighed quantities (about 2 g.) of the raw carnauba
wax, and of both the dissolved and undissolved part
thereof, were saponified with an alcoholic solution of
caustic acid, the althylic alcohol was distilled off after
addition of water, the soap jelly was precipitated with
a solution of sodium chloride, then filtered, combined
and extracted in a Thorn extraction apparatus with
petroleum ether, volatile at 75 degrees to 90 degrees C.,
whereupon the extract quantities which were dried at
no degrees, were determined.”
xQ. 318. Do you understand that “both the dissolved and un¬
dissolved part thereof” were saponified together ; or was each
separately saponified
A. I understand that each was separately saponified.
xQ. 319. Will you please assume that the passage just read by
you in answer to xQ. 317 should be construed to mean that the
raw carnauba wax was separately saponified with an alcoholic
solution of caustic soda. Then, what is the next step that the
Sturcke article describes in carrying forward test I and II?
A. I do not care to follow a line of reasoning in a matter of
this kind on an assumption which I do not understand as being
correct.
Adjourned until Monday, March 25, 1907, at the office of
Frank L. Dyer, Esq., Edison Laboratory, Orange, N. J. at
10 :30 A. M.
Orange, N. J., Wednesday, March 27, 1907.
Met pursuant to agreement. 30
• Present, Counsel as before.
The CROSS EXAMINATION of JONAS W. AYLS-
' WORTH was continued by Mr. Massie.
xQ. 320. During; our last session complainant’s counsel, off
the record raised . some question as to the translation of the
Sturcke article and you were to look into the matter more care¬
fully ; have you done so and have you considered the meaning of
the passage we were examining?
A. Yes, I have gone over this translation very carefully with
Dr. Langmuir, he reading from the original German and I fol- 40
lowing from the translation, and this translation appears to be
entirely correct.
• xQ. 321. I again call your attention to the passage quoted in
314 COMPLAINANT'S BSJlUmi. l’KOOl'S.
answer to xQ. 317. What do you now understand was the first
thing, done to the “raw carnauba wax” ?
A. It would appear from the wording of the translation and
from the original article that the raw carnauba wax had been
saponified with alcoholic caustic soda, and likewise the parts
which were obtained by an extraction with hot alcohol. The
interpretation of this translation in this particular is of no con¬
sequence in the calculations that I have made in the previous
testimony because the per cent, of extract matter given in Ex¬
periments I and II happen to be identical with the per cent, ob¬
tained by alcoholic extraction, as is clearly stated on page 5 of
the translation where the author says:
“In order to examine still further the solubility of the
carnauba wax, 2.62 granims of it were boiled for longer
periods with 750 c.c. of alcohol; of this there remained
unsolved .98 granims equals 38.9%
Therefore, if 38.9% were not dissolved, 61.1% must have
dissolved, which amount is identical with the amount obtained
in Experiment I. In making the previous calculations where I
obtained 31.4 per cent, free wax alcohols the figure adopted for
the parts soluble in alcohol was 60% and for the parts not soluble
in alcohol it was 40%. .
All but the first clause of the above 'answer (down
to the word “likewise”) is objected to as volunteered
and not responsive.
The witness is cautioned that if he persists in answer¬
ing matters not inquired about it will prolong the cross-
xQ. 322. Assuming, as you have done, that the raw carnauba
wax consists ofthree classes of bodies, namely, free acids and
combinations of alcohols .and acids, constituting esters; upon
saponification with the caustic soda the result would consist of
three classes of bodies would it not, namely, the solvent employed
with the caustic soda, the soaps formed by the soda and the
acids (both those originally free and those, that were in combi¬
nation), alcohols, which latter would comprise both the free
. alcohols atid the alcohols that had formerly been in the esters. ■
A. Asuming that the reactions of saponification were carried to
perfection, that is to'say that the saponification was complete and
that .all acids of esters were combined with the soda, then there
would result the classes of bodies stated in your question, namely,
free fatty alcohols,' the soda soaps of the fatty acids and the
solvent used. • .
JONAS W. AYLSWORTH. ■ 315
xQ. 323. Assuming that the saponification has been carried
out perfectly and is complete (as to which I will give you an
opportunity later to. express your views) I understand that all
the acids would have combined with the soda and that there would
be no free acids, and that all the alcohols will be free, that 'is,
there are none left in combination with esters.
A. That is correct on that assumption, and assuming the car¬
nauba wax to consist only of free alcohols, free acids and esters.
xQ. 324. After saponification of the raw carnauba wax what
is the next step which Sturcke says he took in experiment I? io
A. He separated the resultant soap and fatty alcohols from
the solvent.
xQ. 325. He then had a mixture consisting of these soaps and
the fatty alcohols, and upon the assumption that the carnauba
wax was as already stated, and that the saponification was com¬
plete, there was nothing else but soaps and fatty alcohols left.
What was his next step.
A. His next step was to separate the resulting soap from the
water which was used in removing the alcohol solvent and then
drying that soap mixture and extracting, after drying, with 20
petroleum ether.
x Q. 326. I would like to follow the language of Sturcke a
little more closely. After saponification he says first “The alco¬
hol was distilled off after addition of water.” As I understand
that he first adds water and then distills, and that after distilla¬
tion, he would have left the soaps, the fatty alcohols and the
water. The next step is precipitation of the soap jelly with a
solution of sodium chloride and then filtering and drying, which
I understand to mean adding common salt and having the soap
precipitated which gives as before the soap, the fatty alcohols 30
and the water; and that upon filtering the soaps remain while the
water and the fatty alcohols pass away ; is that correct?
A. No, the latter part of that question is not correct. The
soap and the fatty alcohols together are precipitated by the
sodium chloride treatment and remain 011 the filter ; it is, however, ,
possible that this separation' is' no; t exactly complete as the pres¬
ence of some fatty acids in combination with soda are not readily
precipitated by the sodium chloride treatment.
xQ: 327. We have then on the filter our soda soap and the total
of our alcohols (including those originally free and those that 40
were originally in esters;) assuming always that the saponifica¬
tion had been complete in the first instance? A. Yes.
xQ. 328. That extraction in the Thom apparatus, what is. that,
and what does it give 11s as the result?
31*5' COMPLAINANT’S REBUTTAL PROOFS.
A. The extraction by the Thorn appparatus was, petroleum
ether extracted the fatty alcohols from the soap mixture; in
this particular the amount of extract obtained can be only the
minimum amount of the alcohols which were originally free and
which were set free by the saponification, assuming the saponifi¬
cation was complete, because Sturcke mentioned in another part
of his article the difficulty met with in performing this extrac¬
tion. It is not likely that in any of these experiments his extrac-
■ tion of these alcohols contained in’ the soap mixtures was entirely
io complete, because the least traces of moisture, which he found
later, affected this extraction by causing the soap to become jelly-
like and preventing the complete action of the solvent. Assum¬
ing that the conditions of the experiment were absolutely perfect
and that the extraction was carried to the utmost limits, then
there would result a separation of all of the fatty alcohols present
in carnauba wax from the soda soap of the acid present in the
carnauba wax.
xQ. 329. Then, if we assume, first that the carnauba con¬
sisted of three classes of bodies named and did not have any
20 resinous or other bodies present, and if we assume, second, that
the saponification was carried out completely and also the suc¬
ceeding steps w.ere carried out to perfection, the extract matter
which he obtained in test I consisted of the sum total of all the
alcohols and was about sixty per cent. Is that correct?
A. Assuming the three steps to be carried to perfection then
there would result a separation of the total amount of alcohols
contained, in the carnauba wax from the dcids. ■
xQ. 330. Upon the three assumptions named in my previous
question the total amount of alcohols in carnauba wax would be
30 about 60% and the total amount of acids would be about, forty
per cent.. ■
A. That would be the result obtained in experiments I and II .
assuming those things and assuming that we have correctly in¬
terpreted the steps followed by Sturcke,
xQ. 331. Now consider that the first step by Sturcke, the
saponification, was not performed with a boiling alcohol solution
of caustic soda and was not carried out under presseure, that
would leave in our mixture not only the soaps and the free
alcohols (consisting of those originally free and those set free)
4° hut also some esters, would it not? A. Yes, that is correct.
xQ. 332. After we have distilled off the solvent that contains
the caustic soda and have added sodium chloride to precipitate
the soaps and the fatty alcohols, what effect would this have on
those esters which remain unbroken up by the saponification.
JONAS W. AYLSWORTII. ' 317
A. They would go with the fatty alcohols and the soap mix-
xQ. 333. So that when we have filtered and dried and sub¬
jected to extraction with petroleum ether, the mass to which the
petroleum ether is applied, consists of three classes of bodies,
soaps and fatty alcohols and also our esters. What happens
to the esters upon the petroleum ether application?
A. The esters would possibly be partly dissolved by the
petroleum ether and the higher esters would not dissolve in the
petroleum ether and would remain in the residue. By “higher
esters” I mean the higher carbon compounds such as the higher
carbon acids, combined with the higher carbon alcohols.
xQ. 334. Is it your opinion that some esters (those which
you have classed as the “higher esters”) do not dissolve in
petroleum ether, and if so what is your authority or reason for
this?
A. From my own experience I conclude that the esters present
in the body would remain in the residue unless the petroleum
ether were boiling, in which, case the esters would be possibly
more or less completely dissolved.
1 xQ. 335. In the passage from Sturcke read in answer to
xQ. 317, lie adds, after the word ether, “volatile at from 75
degrees to 90 degrees C” what is the significance of this phrase?
A. That phrase points out the particular quality of petroleum
ether used. . Petroleum ether comes in a number of different
grades which, are volatile from about 40 degrees C up to the
boiling point of water and the particular petroleum ether which
Sturcke used in this experiment was that grade which has a
boiling point of from 75 to 90 degrees -C.
xQ. 336. Can you tell us how petroleunt ether of the grade
here roughly indicated by Sturcke acts in dissolving esters as
compared with petroleum ether of lower boiling point" on the one
hand or higher boiling point on the other? A. N6, I cannot.
xQ: 337. Returning now to xQ. 333, assuming that some of
the esters which had not been broken up by . the original saponi¬
fication, should be dissolved in petroleum ether along with the
fatty alcohols, then the above 60% of extract which Sturcke
found would consist, not of alcohols alone, but also of some
esters containing acids; is that correct?
A. They might contain small traces of the esters, but judging
from the extract quantities obtained- in experiments I and II as
compared with the percentage of total alcohols present as calcu¬
lated from his other experiment on page 5 of the translation
want’s rebuttai. proofs.
JONAS W. Ayi.SWORTII.
319
318
where he operated, on 2.52 gramms, I would conclude that the
unsaponified esters, if present at all, in the result of these experi¬
ments would be found chiefly in the part that was not extracted.
I come to this conclusion from the following calculation of his
experiment on page 5 of the translation which I have referred to,
where he operated on 2.52 gramms, tlie calculation clearly stated
is as follows:
Operating on 2.52 gramms of carnauba wax with 7.50 c. c of
boiling alcohol, 61.1% is dissolved and 38.9% is undissolved.
Then, m experiment IV he finds that 54.1 per cent of alcohols
was separated from the part that was not soluble in hot alcohol ;
consequently that part which was not soluble in hot alcohol cpn-
sisteclof 54.1 per cent, of combined alcohols and 45.9 per cent of
combined acids. Then in experiment III he found that 78.4%
of alcohols was extracted front the part of carnauba wax which
is soluble in hot alcohol. Therefore the part which was soluble
in hot alcohol must have consisted of 78.4% of both free and
combined alcohols, and 21.6% of acids. Therefore, of the 38.9
per cent, in the experiment on page 5, which was insoluble in
alcohol, 21% is wax alcohols and 17.9% is acids, and of the
parts soluble in alcohol, namely, 61.1%, 78.4% of which is
alcohols, equals 47.9% ; and 21.6% of this 61.1% was. acids that
were in combination in the esters contained in this part of the
carnauba wax which was soluble in hot alcohol. Hence, 21% of
wax alcohols in the insoluble part, and 47.9% of wax alcohols
in the soluble part, equals 68.970 total alcohols in the wax and
since this result, 68.9%, is very much higher than the total
alcohols that were obtained in Experiments I and II, therefore I
would conclude that either the saponification was incomplete and
some of the esters had remained unextracted, or that some of the
liberated alcohols were so locked, up in the soap mixture that they
themselves were not extracted by the petroleum ether. Front
these different experiments we find 68.9% total alcohols in the
wax; therefore, there must have, been 31. i%- of acids in the
wax. The ratio of acids to alcohols, as found in the ester by
Sturcke’s Experiment IV is 45.9% acid, to 54.1% alcohol ; then,
according to this ratio, there would be combined with the 31.1%
acid, 36.6% combined alcohols, which, deducting, the 68.9%
would leave 32.3 per cent, of free alcohols. '
All but the first clause of the above answer, down to
the words “but judging,” etc., is objected to as volun¬
teered and not responsive and as prematurely imma-
Since this testimony is being taken stenographically
defendant’s counsel would desire to see the transcript
before undertaking to cross-examine upon this answer,
such examination, if any, being of course de bene esse ,
without waiving the objection.
xQ. 338. Please go back again to the beginning of experiment
I and assuming that our carnauba wax contained, besides the three
classes of bodies already named, resinous bodies and other sub¬
stances. If the steps, named by .Sturcke .be followed out, be¬
ginning with the saponification, that happens to these other bodies
and what becomes of them ?
A. Resinous bodies have generally acid properties; they would
therefore be combined with the caustic soda and would remain
with the soap, as a part insoluble in the petroleum ether. Other
bodies which might be present would be the hydro-carbons, which
would of course go with the alcohols in the petroleum ether
solution. Other bodies which might be present in the lactone,
which is converted by the saponification into the salt is a hydroxy
acid and consequently would go with the soap.
xQ. 339. To wind up experiment I as far as we have gone,
if we assume first that the raw carnauba wax contains nothing
but acids and alcohols (free and also in combination with esters)
and if we assume that the saponification be carried out completely,
and if we assume that the subsequent steps, including extraction,
be carried out perfectly, then you understand that Sturcke ob-
• tamed 60 % in found numbers of total alcohols and 40% in round
numbers of total acids. But if you assume that there were other
bodies present in the carnauba wax, then the resinous bodies will
■ affect the total percentage in one direction and the lactone would
affect it in the other direction, and the hydro-carbons would affect
it in the same direction, sons to vary. this percentage.’ And again*
if we assume that the saponification was not completely carried
out, some of the unsaponified esters would diminish the percentage
of total alcohols found, while others might increase it. Is that
substantially correct?
A. No, that is not substantially correct. Under those assump¬
tions what would take place would be that, first, there would
not be complete saponification, the majority q.f the esters would
go on the side ’of the acid determined 'in the experiment second,
tile resinous bodies of the lactone would go on the side of the
acid percentage determined by the experiment; third, the hydro¬
carbons would go on the side of the alcohol percentage as deter¬
mined' by tile experiment. ...
320 complainant's kbduttal proops.
xQ. 340. Does it not seem to you to be the fact that this
Sturcke article is somewhat vague, and, considering separately
his different tests we reach somewhat inconsistent results?
A. I consider the Sturcke article as a highly scientific produc¬
tion, but in all work of this kind of analyses of organic substances
there is not that sharp quantitative determination possible which
is possible in unorganic analyses, and that the result of none of
the experiments can be taken as exactly quantitative, butjthey
can be taken as approximate quantitative results and they show
rather the minimum amounts of combined and free alcohols rather
than the whole amount of the same, and the errors of these cal¬
culations are rather in favor of more alcohol being present than
were found in the determinations, than the reverse.-
xQ. 342. Please refer now to Sturcke’s experiment IV. The
basis of this experiment is something less than two gramms of
something “insoluble in alcohol;” what does that something con¬
sist of? •
A. That something could consist of only the esters present in
the carnauba wax, because it is well known that the free alcohols
and free acids arc soluble in hot alcohol. It does not follow from -
that, that it represents all of the esters contained in carnauba
wax, because the results of the experiments show that some of
the esters were also in the part soluble in the hot alcohol, but it
does give a fairly accurate example of the constitution of the
esters that are contained in carnauba wax.
XQ- 343- I understand that you gather from Sturcke’s article
that this substance forming the basis of experiment IV consists
of the bulk of the esters which arc a fair sample of the aggregate
esters; and that without regard to the nature and amount and
combining weight of each of the different acids in those esters,
or of each of the different alcohols in those esters, the aggregate
combining weights of the acids as a class and of the alcohols as
a class, are found by Sturcke to be from 45.9 to 54.1 ?•
A. Yes sir, that is correct., That ratio of acid to alcohol
would more nearly approximate the actual truth in regard to the
esters than any calculations that are based on molecular formula:.
xQ. 344. What do you say is the percentage of free acid or
free acids in carnauba wax?
A. I have never determined this percentage of free acids but
40 from the acid value given by Lewkowitsch it might be calcu¬
lated, but, if so, the acid would have to be assumed to be a cer¬
tain acid ; therefore there is no positive way of arriving at the
exact amount of free acid. In the experiments which have been ,
JONAS \Y. AYLSWORTH. 321
referred to in the testimony of Professor Stillman where the
determination was calculated from the amount of soda it took to
neutralize the acids of carnauba wax which was rather higher
than those published in the book of Lewkowitsch, these variations
are most probably due to the method of determining the acid
value as well as due to variations in the particular samples that
were operated on.
The very latest determination of acid value of carnauba wax
is given by Radcliffc in the Journal of the Society of Chemical
Industry, Vol. 25, 1906, page 158. He gives the value more in 10
accordance with Professor Stillman's determination ; he gives
the value of 2.9, and a saponification value of 88.3. The utter
unreliability of saponification values and acid values for cal¬
culating the contents or composition of carnauba wax is indi¬
cated by this same writer, Radcliff, who gives the saponification
value of the grade of carnauba wax known as Cerra, as 88.3
and for the same wax,, bleached, he gives a saponification value
of 33. ; this indicates that there is present in the raw carnauba
wax something or some acid which has a very high saponifica¬
tion value, whose nature is not known. Further, this same 20'
author gives an iodine value of 1.3.7 which is indicative of the
presence of a considerable amount of some Unsaturated bodies. ,
The' iodine value for myricyl cerotate should be practically nil.
The iodine value for bees wax is given by Lewkowitsch as from
7 to 10.
A further example of the unreliability of saponification value
in calculating the composition of carnauba wax is indicated by
the high saponification value given by Lewkowitsch, page 875
for flax wax which is given as 101.51’ and in the same table he
gives the percentage of alcohols and hydro-carbons contained 30-
in the same as 81.32%. Hence, here we have a saponification
value of -101.5 for a compound which has as much as 81.3%
of alcohols and hydro-carbons, or,, in other words, for an acid
contents of 19% we have a saponification value Of 101.5.
xQ. 345. In the beginning of -the rebuttal proof complainant’s
witnesses seemed to have assumed that the alcohol in carnauba /
wax, or certainly the bulk of the alcohol, consisted of myricyl
alcohol, and in like manner, the acid, or the bulk of the acidsj
consisted of cerotic acid and therefore the ester, or the bulk of
the ester, consisted of those two specific bodies, and Professor 4°’
Stillman figured upon this basis something like 7% of free acid.
In the next place Prof. Stillman discredited Lewkowitsch’s state¬
ment on' the ground that various figures of the latter were in-
proxi.mately the highest; there may be one of the other acids
mentioned that is possibly higher in combining weight than
xQ. 346. What, if anything, do you know as I
licse various bodies present in carnauba wax,
erotic acid and the combining of the two latter.
:o the amount of
myricyl alcohol,
various bodies in carnauba wax; but there is a fairly accurate
indication of the amount of free- alcohols which' is indicated by
the acetyl value found by Lewkowitsch and others.
XQ • 347- There scents to be no question of the presence of
free acid or acids at any rate. Assuming that the bulk of the
free acids consist of something other than ccrotic acid, then a
comparatively small percentage, would be allotted for the free
A. For the purposes of argument we might assume any ngme.
We can safely assume anything between one and three per cent.,
which amounts are given in the literature. There is no specific
evidence as to the presence of acids of low combining weights',
yet there is very strong evidence of their existence in the carnauba
wax, which is indicated by the high saponification value given by
the different authorities, and Sturcke’s article by no means can
be considered as a total quantitative, or even a total qualitative
analysis of carnauba wax ; he simply stated what he did find and
Ii,n» Ic rln't!, mVn liv which it could be inferred what other
324 ' COMPLAINANT'S, REBUTT At, PROOFS.
A. I would be unable to tell whether they were free or in
combination.
xQ- 354' If any of these acids of the low combining weights
are present in the esters does that mean that each portibn of such
acids would take up a larger amount of alcohol than the same
amount of cerotic acid would take ?
A. Yes, they would take up more than would be the case with
cerotic acid.
xQ- 355- If we have determined the total amount of alcohols
10 (both those originally free and those liberated from the esters)
and if we assume the presence in the esters of some of these acids
of low combining weights, would that not reduce the amount of
free alcohol?
A. In my calculations for the amount of free alcohol the ratio
of acid with alcohol found by Sturckc' in experiment IV was
taken in preference to any assumed values, and on the basis of
that ratio, the percentage of free alcohols were calculated. Con¬
sequently the presence of bivalent or monovalent acids would
have no hearing as to accounting for combined alcohol, because
20 the actual conditions found by experiments were used in these
calculations. •
Answer objected to as not responsive.
xQ. 356. The question is, if we have determined the total
amount of all the alcohols and if we assume that of the acids
some parts consist of these acids of low combining weight, and
that these latter acids arc present in the esters, would not that
result in a smaller percentage of free alcohol than if our acids
were cerotic acid only.
A. I would not place much value on deductions arrived at in
.-,3° this matter, because there are to many assumptions. In experi¬
ments I and II, even assuming that carnauba wax was initially
saponified with alcoholic soda and that the various steps of the
' process were carried on to perfection, the most that could be
depended on from that experiment would be that there was pres¬
ent 61% total alcohols and 39%total acids. In order to, figure
anything further from this result it is necessary to bring in a lot
of complicated assumptions and the results would be very un¬
certain. .
. Answer objected .to as not responsive.
4° -vQ. 357. I put it to you to consider two cases! first, .we find
-61 parts of total alcohols and thirty-nine parts of total acids,
and assuming that the acid is cerotic acid (or other acids of the
same combining weight) and that this acid unites with a certain
JONAS W. AYESWORTH. 325
amount of our alcohol to produce esters, leaving an easily cal¬
culable percentage of free alcohol; then assume, second, that
some of this 39% of total acids consists of the acids of low com¬
bining weight which enter into the ester combination — the ques¬
tion is, would not those latter assumptions give a smaller per¬
centage of free alcohol than the first assumption in this question ?
A. In order to answer that question correctly it would he
necessary to take into consideration whether or. not there are not
present among the alcohols some dihydric or bivalent alcohol,
since Sturcke found alcohols of this nature present in carnauba
wax ; in order to answer your question we would have to assume
that they did not exist because if they did exist they would greatly
modify the results and if there existed in some percentage such
bivalent acidic substances, one would just about offset the other
and not- knowing the percentage of either present we would have
to have the question expres the assumption that these alcohols are
not' present or that they are present.
Adjourned until Monday, April 8, 1907, at 10:30 o’clock A.
M. at the office of Frank L. Dyer, Esq., Edison Laboratory,
Orange, .N. J. ,
Orange, New Jersey, July 17, 1907.
Met pursuant to agreement.
Present — Counsel as before.
The CROSS-EXAMINATION of Mr. AYLESWORTH is
resumed by Mr. MassiE:
-Defendant's. counsel gives notice that under the stip¬
ulation heretofore made, lie will print as part of de¬
fendant’s record herein, the license agrepnient between .
the American Graphophone Company and National
Phonograph Company ct al, dated December 7th, 1896,
together with some or all of the patents under which
the said Graphophone Company is thereby licensed.
Defendant’s counsel likewise gives notice that he will
read in his record. in this case, extracts from the Mac-
donal’d Note-books made exhibits in the companion suit
No. 10 on the Macdonald Composition Patents of 1898
—the entries, referred to relating to the use of carnauba
xQ. 358. T note that in your testimony you' emphasize the dif¬
ference between the art of molding cylinder-sound records and
molded records on the" one hand, and the art of molding blanks
Properties in which your patented composition differs frdm your
irdinary blank composition, are of importance only in the molded
ecord art. Is that correct ?
A. That is substantially correct. The difference in the moili¬
ng' properties of the patented composition and the blank com-,
losition render the 'former decidedly successful for its purpose,
Wt for the purpose of recording by cutting in the patented com-
>osition while it might he used as a blank composition, is not as
lcsirablc as the old blank composition itself.
xQ. 359. For the purpose of the present discussion we may
■egard the art of making blank cylinders, and of making records
herefrom (either .original records or mechanical duplicates)
is one branch of the art; and the art of making molded cylinder
•ecofds as another branch of the art. And comparing your pat-
inted composition with. the regular blank composition, the pat-
:ntcd composition lias no superior advantages or utility over
lie old composition!! except for the molded record branch of
lie art?
A. We cannot at the present day regard the mechanical du¬
plicating as one branch of the art and the molded record as an¬
other branch of the art, because the molded record .at the time
if its adoption, superceded the old and inferior process of me-
titanically made duplicates. If the molded record art were not in
use and the mechanically made duplicate art were in use, then
it would be a question for experimental demonstration whether
the patented composition would be advantageous over the blank
composition or not. It would certainly have some advantage
as to the wearing, but whether the disadvantages of more imper¬
fect, cutting of the patented composition would offset the ad¬
vantage of wearing, would be a inatter of experimental demon¬
stration.
xQ. 360. Please assume that we have your patented compo¬
sition and are engaged solely with making blank cylinders. to be
used for making original records directly upon the phonograph.
Would your last answer be the same, namely that the patented,
composition would have better wearing qualities and would have
possibly inferior cutting property? A. Yes.
x Q. 361. Then is it not the fact that for the patented compo¬
sition to be of any utility over the prior composition, it must be
used in what we are now distinguishing as the molded-record art?
A. No, I rather think that1 if we did not have the. molded
wearing properties ot the patented composition would stimulate •
the recording art to overcome such obstacles as are met with in
recording on the patented composition, so as to realize an im¬
proved result over that which could be obtained on the present
blank , composition.
xQ. 362. It seems to me that the fact that the possession of
the- patented composition, assuming the non-use of the molding
record art, as a stimulus to improve the method of recording by
cutting, is not of present usefulness. I will, however, restate the 10
question: Is it not the fact that if we arc not dealing with the
molded record art, but have your patented composition and wish '
to employ it in making cylinder records in any of the ways
ordinarily, employed before the advent of the molded record art,
so far as any present developments have occurred the patented
composition has no utility over the ordinary old blank composi¬
tion, unless it be that of superior wearing qualities; and it is
problematical whether the advantage of superior wearing quality
might or might not be more than counteracted by the inferior
cutting quality ?. so
A. I11 tile art of making records by cutting, it is first necessary,
to get the composition having the properties desired and then
adapt the recording mechanism to suit the composition. All such
recording mechanisms now in use are adapted to suit the blank
composition, and if'the blank composition was discarded and the
patented composition was substituted in its place, there is no
question in my mind but what the difficulties due to the greater
toughness of the patented' composition, would be overcome and
that the patented composition would prove superior in several
ways over the present blank- composition; but of course, it is not 30
so utilized; because the molded record art makes it unnecessary.
If we did not have the molded record art, however, it is ex¬
tremely probable that the patented composition, or. some other
composition haying similar, properties would come into. use.
Answer objected to as not responsive. The question
was framed in order to exclude any conjecture as. to
what improvements, might be made in the recording
mechanism.
xQ. 363. Can you answer the preceding question considering
only the developments that have already, taken place, without 40
referring to; what improvements might be made in recording
mechanism?
A. By improvements in recording mechanism, I, did not mcaii
to refer to new inventions in that way, but simply the adjustment
328
1>I.AINANT'S RK1IUTTAI, l'UOOl'S.
of the angle of the needle and the thickness of the diaphragm to
suit a harder and tougher material. I do know that the patented
composition when properly filtered, which filtration by the way,
is not a necessity in the molded record art, has certain decided
advantages over the blank composition, due to its greater wear¬
ing properties, even when used in making piasters at the present
day for the molded records, because in so making the original or
master records, it is necessary to reproduce the same several
times in order to note the defects in the execution of the music,
or in the making of the record, and in so doing with the present
blank composition, the records are frequently injured; whereas,
with the patented composition, they are not so susceptible of
injury, owing to the greater wearing properties.
x Q. 364. Since the last session, have you given any further
study or attention to the subject of the composition of carnauba
A. I have not; I have been away to Europe in the meantime
and on other business and have no opportunity of investigating
any further into the composition of. carnauba wax, other than-
to read over hastily the testimony which was given just pre¬
vious to the last adjournment.
x Q. 365. It is the fact, is it not, that carnauba contains com¬
pound ethers or “esters,” and that these are “wax-like”?
A. It is well established by all authorities that camauba wax
does contain a hard wax-like ether of ccrotic acid and myricyl
alcohol but that it docs not contain an ether of stearic or pal¬
mitic acid, such as is produced in the patented composition.-
■ xQ. 366. Is the ether which you say- is contained in camauba
wax a “wax-like compound ether”?
A. Wax-like is a, very general and broad term and I do hot
think that compound ether already existing in carnauba wax
could be strictly defined as wax-like,, because it is very hard and
has excessive shrinkage properties, whereas most wax-like ma¬
terials are similar to bees’ wax' and paraffine, etc., which do not
exhibit these properties. However, it is a wax, or rather belongs
to the class of organic- substances, known as waxes. Myricyl
cei-otate which is found in carnauba \wax is a compound ether.
xQ. 367. If we take your regular biank composition and about
ten to fifteen per cent, of carnauba wax, and simply melt the two
and mix them thoroughly together, in your opinion, is the result¬
ing composition correctly described by the language of any of
the claims here sued on ; and if so, which claims.
'A. Although I' do not pose as a patent expert, I think that'.,
the composition mentioned in claims 7, 8, 9, 10, 1.1, 12, 13, 14,
329
JONAS W. AYLSWOItTII.
15, 16, 17, 20, 21, 23 and 24 are not such as you refer to in your
question.
xQ. 368. Why, and you may confine yourself to claim 7 in
A. Because, in this claim, which reads- —
“A composition for phonograph recording purposes,
. comprising a metallic soap, and a wax-like compound
ether, substantially as set forth.”
it is meant that the wax-like compound ether is produced in the
making of the composition as set forth in the specification, and 10
further there is no non-hygroscopic ingredient which is present
in the blank composition.
xQ. 369. You have just stated that you do not claim to be a
patent expert, and my questions have not asked you to interpret
the scope and meaning of the claim. Please refer to the language
of claim. 8 and state whether or not, in your opinion, that lan¬
guage correctly describes the material made by thoroughly mixing
the regular blank composition and carnauba wax when molten,
but without employing the high temperature or the protracted
heating? 20-
Counsel for complainant protests against questions of
this character, which are plainly directed to matters of
expert testimony as to the interpretation of the claims.
The witness is a chemical expert and not a patent ex¬
pert. Patent experts have already testified for both
sides and could have been examined by defendant’s
counsel. If Counsel merely wishes to know whether a
certain composition is included by the “language” of
the claims without reference to the specification to ex¬
plain what the language means, the question is plainly 30,
frivolous and immaterial and is objected to for that
reason. The question and similar questions of this char-
acter arc further objected to as having no basis in the
direct examination- and defendant’s counsel is warned
accordingly.
A. The wording of the claim indicates a mixture of the metallic
soap and compound ether substantially as set forth in the specifi-'
cation, and since with reference to this particular claim, the speci¬
fication mentions combining these materials in a particular way,
unless that particular way were followed, the case mentioned in 40
your question would not come under this claim.
Answer objected to as seeking to interpret the scope .
' of the claim and as not responsive.
33° complainant’s uijuuttal proofs.
xQ. 370. If I take, say ten o.r fifteen parts of carnauba wax
which contains a compound ether that is a wax and which in
some of your answers you say is “wax-like," and add it to say —
one hundred parts of regular blank composition, by merely fusing
the two and mixing them thoroughly together, is the composition
so obtained “a mixture of a metallic soap and a wax-like com¬
pound ether” ?
A. Yes, without reference to claim 7, which in your previous
question was referred to, I should call such a mixture “a' mixture
10 of a metallic soap and a wax-like compound ether.”
xQ. 371 . Would you call the mixture obtained, as stated in
■ a-Q. 370 “a mixture of a metallic soap, a wax-like compound
ether, and a non-hygroscopic ingredient” ?
A. Provided that the temperature were not high enough to
cause combination between the mixture, the wording of the
question — that is — a mixture of a metallic soap, a wax-like com¬
pound ether, and a non-hygroscopic ingredient, would correctly
describe the composition. In these questions, no reference being
made to the temperature or method of combining these mate-
20 rials, which in the claims of the patent arc clearly referred, to,
in the words “substantially as set forth.”
The last sentence is objected to as incompetent and
volunteered.
xQ. 372. Is the mixture obtained as stated in xQ. 370 “a mix¬
ture of a metallic soap, a wax-like compound ether and ceresin”?
A. Assuming that the wax-like compound ether of your ques¬
tion to mean any wax-like compound ethers, and. not the special
■ wax-like' compound ether of the patent, then I would answer
your question in the affirmative.
30 xQ. 373. What is the thing which you .'regard as “the special,
wax-like compound ether of the patent”?
A. The substance which gives the composition its peculiar
properties , of toughness and shrinkage,' and the other properties
mentioned, whether it may be the added compound ether, or the
product of inter-action of the added compound ether with the
wax-like composition, or an entirely new compound. ether; formed
. in the composition from the: free myricyl alcohbl of carnauba
wax, as specified in the patent. , .
xQ. 374. If you, add carnauba wax to the regular blank
40 composition, and .do not get the peculiar properties of toughness
and shrinkage,, and the other properties, which you have, men¬
tioned in connection with the Aylsworth composition, during
your testimony herein, !■ understand .your position to be that
JONAS W. AYLSWORTII. 33I
although such composition would be correctly defined by the
language quoted ill xQ.’s 370-372, yet it would not be the com¬
position called for by claims 7,. 8 and 9 of yonr patent ?
Question objected to as calling for a conclusion of
law and Counsel for complainant renews his' protest
against the continued .examination of this witness as
to matters which are purely within the province of a
technical patent expert.
A. This seems to be a patent expert question, in fact all of
these questions appear to be patent expert questions, but dc- 10
fendant’s counsel objects to my answering in the way that they
should be answered by a patent expert; consequently I cannot
answer these questions intelligently without referring to the
exact-wording of the- claims and from my understanding of the
xQ. 375. If you add carnauba wax to the regular blank com¬
position (assuming them in the proportions of about 10 or 15
parts carnauba to ,100 parts of the blank composition) and
merely fuse them and mix them, is it. your position that the com¬
position so obtained would not have the peculiar properties now 20
and formerly referred to by you as distinguishing your patented,
composition?
A. Since in your question, you mention no temperature, but
simply say fused or mix the fused ingredients, I would infer
that you mean not materially heating the material beyond their
melting point, and in which case, the patent specification clearly
states what my belief under such conditions are, where it states:
"Unless the carnauba wax is melted beyond its melt¬
ing point resulting in the reaction taking place, the ■'
composition, although harder, is very brittle and 30
, ,:. ’ shrinks excessively and is therefore not so desirable '
as when the high heating is effected.”
xQ\ 376. Assume please, that we take the ordinary blank com¬
position and add to it, another ingredient, (whether carnauba 1
or "a hard Wax”; or “a wax-like compound ether”), or even 1
still some other ingredient, from which during treatment with
the blank composition a wax-like compound ether is produced ;
and suppose the treatment consists of the application of the tem¬
peratures indicated by your patent, continued' during the, times
indicated by your patent; but suppose the composition resulting 40-
front this trcatrtient does not have the peculiar: properties of hard¬
ness and shrinkage and the other properties heretofore referred ’
to by you. Would such composition be your patented composi-
332 . complainant’s rebuttal proofs.
A. That is more in the line of a patent expert question then
a chemical question, and as such I am hot particularly qualified,
yet it is my opinion that if the results ivere not obtained and the
patent specification were strictly followed that it would be through
the mistakes or accidents" in attempting to make the composition
that such an unfavorable result would occur, provided we were
using carnauba. Speaking as a chemical expert, I should say
that if some other material beside carnauba were used in the
same way and if we did not get the same result, it would not be
10 in accordance with the practice of the patent. ,
xQ. 377. I had understood your testimony in previous sessions
to he to the general effect that if you added carnauba to the
blank composition, but did not raise the temperature materially
beyond the fusing point of the ingredients, the resulting com¬
position would not have the desirable properties sought for by
your patent. In short, such procedure would not be an infringe¬
ment, but your answer to xQ. 375 seems to be somewhat different
In yonr opinion, would or would not the composition so obtained
have the new and desirable properties of the Aylsworth patented
20 composition? _■
Question objected to as calling for a conclusion of
law and counsel again protests against this line of cross-
examination, because it should properly have been ad¬
dressed to the patent experts who have already testified
in this case, if permissible at all. And the question is
further objected to as having no basis in the direct ex¬
amination. The question is jtlso objected to as being
irrelevant and immaterial, since it relates' to no issue
involved in this case, the proofs showing that with
30 defendant’s practice the composition was heating to a
high temperature.
By Mr. Massie — Complainant’s counsel is requested
to read the question and state wherein it calls for a con-
. elusion of law.
A. It would have some but not all of the desired properties of
the patented composition, as preferably made. '
XQ- 378. As a chemist, arc yoifi prepared to say that every com¬
position containing the regular blank composition and a wax-like
compound ether, where the temperatures and times called for by
40. the patent have been employed, wotild have the peculiar properties
which you have attributed to the Aylsworth patented composition? .
A. I can only answer definitely for such materials as are men¬
tioned in the patent. There might be added wax-like compound
JONAS W. AYLSWORTH.
333
ethers which would convey undesirable properties, such as the
compound ethers occurring in certain fish oils and various sub¬
stances which might be used in the manner mentioned in your
question and without first trying them I would not be able to
answer the question in such a broad'general way.
xQ. 379. Are you prepared to say as a chemist, that every com-
, position containing the regular blank composition and a hard wax
where the compounding of the same has been accompanied by
the temperatures and times, called for by the patent in suit, would
have the peculiar properties which you have attributed to the 10
Aylsworth patented composition ?
A. No, I am not prepared to say that any such mixture would
have the properties mentioned in the patent in suit, and as a-
chemist I. could not advance any conjecture as to what the prop¬
erties might be without knowing in advance the particular sub¬
stances it is desired or intended to mix with the blank composition.
xQ. 380. Please consider the case where the ingredients, (the
regular blank composition and carnauba in substantially the pro¬
portions indicated by your patent) have been merely fused and
. thoroughly mixed, as distinguished from heating to a tempera- 20
ture materially higher and maintaining this temperature for a
number of hours, of until all foaming had ceased. I understand
you to say that in the first case the resulting composition will
have some, but not all the peculiar advantages of the patented
Aylsworth composition. Please state which of the advantages
which you regard as peculiar to the Aylsworth patented composi- '
tion would not be present?
A. it would have nearly all of the properties of the composi-
. tion which was heated to the high temperature for a prolonged
period, but itwould in addition be more brittle and not such a-jo
desirable composition for the purpose of making molded records.
And further, such a composition would have an excessive shrink¬
age, which is objectionable.
xQ. 381. So that for all practical purposes, the only differences
between the Aylsworth composition made in the preferred man¬
ner and the composition made with carnauba not beyond its fusing
point, are increased brittleness and greater shrinkage of .the lat¬
ter — that is, so far as the molded record art is concerned ? .
A. That is all that I now think of, and they are quite sufficient
to render the preferred method and composition operative in .4°
preference to the simply mixed material at their melting points.
xQ. 382. Is the material simply mixed at the melting point in
your opinion suitable for use in making molded records ? ,
334
IKUUTTAL’ PROOFS.
A. It might be used with a part of the advantages mentioned
in the patent specification, but not so effectively or preferably as
the preferred method and product mentioned in the patent.
Signature and certificate waived.
Adjourned subject to agreement of counsel.
Edison Laboratory, Orange N. J.
Friday, February 22d, 1907. '
Met pursuant to 'adjournment.
20 Present Counsel as before.
THOMAS A. EDISON, a witness called on behalf of the
Complainant having been first duly sworn deposes and says as
follows:
DIRECT EXAMINATION, by Mr; Dyer:
0. 1. Please give your name, age, residence and occupation?
A. Thomas A. Edison,- age 60, residence West Orange, -\T. J.,
occupation1 inventor.
0. 2. What, if any experience did you have in the early days
of your experiments with the phonograph in connection with
30 the duplication of records by molding?
A. I had a very extended experience in molding records from
a master by pouring and dipping. .
0. 3. Pouring is the same as casting, is it not? A. Yes, sir.
,01 4. Wiio was the assistant who did most of the work in
those early experiments?
A. I had a great many assistants ; a man named Schultz-Berge
and a mail named Payne and others who I do not recall'now.,
Q. 5. At that time how perfect were the' molds from which ’
you expected to make duplicates?
4°' A, The molds were perfect.
Q. 6.' As perfect as now?
A: I think they were as perfect as they are now. . ' '
0., 7. When was it that these experiments were made?
‘ THOMAS A. EDISON. 335
A. About 1889 or 1890.
Q. 8. At that time the ordinary blank composition that is now
used was well known, was it not? A. Yes.
0. 9. And- that blank composition was as perfect then as it is
now? /I. About the same, I think just the same.
0. 10. The blank composition was the same then as it is now?
A. Yes, sir.
Q. 11. Did you ever attempt in these early experiments to
make duplicates from the blank composition by-casting?
A. Yes, sir. •
0. 12. Did you succeed in those experiments?
A. Yes,, we made some,
0. 13. What difficulties were encountered in that work?
A. The trouble was the unequal contraction, with the poor
surface and with some parts of the records sticking to the mold,
and bubbles, so that the number of the records which were good
compared with those which were not, was very small.
Q.,14. These troubles then were due principally to the ma¬
terial used- and. riot to the process?
A. Yes, due to the materials.
0. 15. Did you attempt to cast records of any other material
than the blank compositions ?
A. Yes, we tried all kinds of experiments with the blank com¬
position in which other ingredients were incorporated, and also
compositions which did not have any of the compositions of the
ordinary blank.
Q. 16. That is to say, as I understand you, you made experi¬
ments with entirely new compositions as well as experiments with
•the blank composition, modified by the addition of other in¬
gredients? A. Yes, sir.
0. 17. Do you remember what materials you attempted to
use in connection with the blank composition?
; A. Yes, we added all kinds of waxes and gums and things
like that, and non-soluble materials which would go into the form
of an emulsion.
0. i8.-.In those attempts to modify 1 the blank composition so
as to fit it more perfectly for the making of- molded records; did
you ever use carnauba wax in connection therewith? '
A. I do not remember positively whether I used carnauba or
not, but if I did it was riot a success; if it had been a success, it
would have made an impression on my mind.
0.19. Do you recall how long these experiments continued;
in which you -attempted to make molded records by casting?'
two processes to see if we could not make a cheaper and bettc
duplicated record than what we were making by the mechanic:
process, one of the processes being pressing the material while in
plastic state against the record within the cylinder, and the otlic
was to melt the material and cast it in the mold ; we went fror
one to the other; as we would get bad results from the castin
process we would then take up and try to cheapen down th
present process; and then I would get other ideas and try th
molding or the casting process again, and we changed from on
to the other ; tried to get some kind of. a process which was mor
expeditious and cheaper and better than the mechanical dttplical
ing process then in use.
Q. 20. In the casting process what was the great difficulty tha
von always met with ?
A. One of the greatest difficulties as I remember it was th
formation of bubbles and the unequal shrinkage, bad surface
sticking to the mold, and of course hardness was what we wanted
but we would be satisfied with no greater hardness than that o
the blank composition if we could get good results in molding.
Q. 21. These troubles then with the casting process all nar
rowed down to the material ? A. Yes.
Q. 22. Did you give up the casting process?
A. No, I did not give it up, as I always experimented with it
but finally I had so much to do that I turned it over to Mr. Ayls
worth to see whether he could not find a good economical com
pound.
.. Q. 23. The pressing process to which you have referred is tin
one that is described in your patent, No. 713,209 of Novcmbci
11, 1902, is it not? A. Yes.
Q. 24. And the casting process that you refer to is described it
your patents No. 667,262 and No. 667,662, of February 5, 1901
is it not?
A. That describes one of several that I used.
Q. 25. After you turned this casting problem over to Mr. Ayls
worth did lie succeed in solving the difficulties?. A. .Yes, sir.
Q. 26. Did lie succeed in making a material that overcame tin
difficulties which you had encountered? A. Yes.
Q.27. Did .you know at the time what this material was tliai
lie made?
A. No, I didn’t pay any attention to it; it went right into
commercial use and I never knew exactly what it was.
0. 28. How extensive was the commercial success of the mold-
latent in suit? A. The day before yesterday.
^ Q • 32. You then silty for the first time what Mr. Aylsworth’s
A. That is the first time I ever read the patent or knew what
le exact composition was.
Q. 33. Were you or not surprised to find 'that the commercial
csults were secured by the use of carnauba wax?
A. Yes I was surprised, but I was particularly surprised at
le way he got the results by the use of carnauba.
Q. 34. That is, as I understand you, by the prolonged heating
t a high temperature?
A. .Yes, by the prolonged heating at a high temperature wliich
vidently produces some reactions which are beneficial and which
’ould not be beneficial if .there was not this long heating. In
tlier words, this little trick appears to have solved the question.
Q. 35. I suppose you have been familiar with carnauba wax
>r a long time?
A. Yes, I have known about it for years.
Q. 36. Did you ever use carnauba wax in your regular output?
A, Yes, I think we did years ago,
Q. 37. Do you recall whether the very earliest records made
ere formed of a composition of carnauba wax and ceresin?
A. Yes, I think we made some records with that, but those
ere original records and not duplicates,
Q. 38. What are the principal peculiarities of carnauba wax as
molding material as you observed it?
shrinkage capacity and, after pouring it, on solidifying, it cracks
in all directions and shrinks enormously and is very hard.
0- 39- Would yoli he able to tell from your general chemical
knowledge and your familiarity with the manufacture of phono¬
graph compositions, without independent experiments, that car-
nauba wax would be miscible with the blank composition ?
A. No, you would have to try the experiments. There are lots
of material, wax-like and resin-like, which are not miscible with
one another, they segregate out; they do not make perfect mix-
0. 40. And in this art, as I understand it, it is necessary to have
a homogeneous composition ? A. Yes, sir.
0. 41 . Can you mention off-hand any materials that you have
found from your experiments do not mix or become miscible
with the blank composition?
A. Yes, shellac, for instance, does not mix with wax; asphalt
Q. 42. I11 view of your familiarity with the peculiarities of
carnauba and particularly its excessive shrinkage and the fact
20 that it warps badly, could you foretell that even if it was. miscible
with the blank composition, its addition to the blank composition
would give the resulting combination of desirable molding proper¬
ties? ■ . ■ .
A. You could not tell anything about it; no person can tell any¬
thing about mixtures of waxes, because the waxes themselves are
mixtures, and the chemistry of waxes is not well known, and of
all the waxes I know of I think the chemistry of carnauba is the
least known and has been very little investigated. It is absurd to
say that you could pre-determine the characteristics of a mixture
30 of many different kinds of fatty acids with resins ; it can only be
obtained by experiments, and then an infinite '.number of results
will be had, according to how they .ire made, with regard to tem¬
perature and the length of time they are subjected to heat.
Q. 43. Then you would not regard it as an obvious expedient
to use carnauba wax in connection with the blank composition '
for the purpose of increasing its hardness and giving it desirable
molding properties ? • •
A. If one knew it was miscible he might think it would' harden
it, but as far as putting it in with another compound and the re-
40 suit being capable of producing perfect effects by casting pro¬
cesses, he could not possibly know such a thing except by actual
experiments. *
.0. 44. In view of the fact that in the manufacture of the blank
1. EDISON.
339
composition it has been the practice for years to maintain the heat '
in the neighborhood, of 450 degrees until foaming ceases, would
you regard it as an obvious expedient, when carnauba is added
to the blank composition, to maintain the heat for several hours,
at that temperature ?
A. I don’t see that it would he possible for anybody to know
that they had to do this to produce good results. This result is
purely a question of many, many experiments, or accident.
. 0. 45. I direct your attention to your patent No. 404,582 of
October 18, 1892. Does this patent describe any materials for 10
use in casting?
A. Yes, it does; it speaks of wax, or wax-like material, and
resin, and plaster of Paris.
0. 46. Would any of these materials be successful for the
practice of the art at the present time?
A. No, I don’t think so. There is no doubt that with some
of them records could be made, but the percentage of good records
would be too small. .
0v47. I direct your attention to your patent No. 406,576, of
July 9, 1889, and call your attention to the reference therein on 20
the first page to the use of carnauba wax. What was this. wax
employed for? - .
A. The carnauba wax was employed to increase the shrinkage,
because asphalt, when we pour it in a mold, does not contract
enough to permit it being pulled out, and I added carnauba wax
to the asphalt for the purpose of causing the whole to shrink
sufficiently to permit it being pulled out of the mold.
0.48. Can you .state whether the blank' composition 'possesses
sufficient shrinkage for the purpose of this art? '
A. Yes, it does. The’ amount of shrinkage need not be very "3°
great, about one thousandth or two thousandth of an inch isquite
sufficient.
0.49. So that with the present art there is no necessity of in¬
creasing the shrinkage of the blank composition if that could be
used? A. No; .
0. 50. I call your attention' to your patent No. 713,209 of No¬
vember it, 1902, before referred to, which describes the pressing
process and ask you if any of the compositions or materials men¬
tioned in this patent would be suitable for the molding art at the
present state? A. No; I do not think so? "4°
0. 51. As I understand this patent, these are all' materials in
which tlie attempt was made to produce a composition that would
be harder than the blank composition? A. Yes, sir.
Q. 52. . And you attempted to do that by the addition of fine pre¬
cipitates? A. Yes.
Q. 53. Did the idea of adding carnauba as a possible hardening
material, instead of the fine precipitates, occur to you?
A. No, sir, I do not think it did; if it had I would undoubtedly
have mentioned it in this patent.
Further taking of testimony was therefore adjourned until
Saturday, the 23d day of February, 1907, at 10 o’clock A. M. at
the Edison Laboratory, West Orange, N. J.
Edison Lahouatouy, Orange, N. J.,
Saturday, February 23, 1907.
Met pursuant to adjournment.
Counsel present as before.
Defendant’s counsel enters timely objection to ques-
■ tion 42 as without basis in the previous testimony of the
witness.
■20 CROSS-EXAMINATION, by Mr. Massie:
xQ. 54. In your answer tp question 5. you say the molds which
you had in the early days were perfect ? A. Yes, sir.
xQ. 55. Why was it supposed to be necessary to split the molds
its stated in one of your early patents?
Objected to as immaterial and irrelevant.
A. To' get the record out ; we thought it necessary.
xQ. 56. In answer to questions 11 and 12 you say that in those
early experiments in attempting to make duplicates front the
blank composition by casting, you made some; at what fempera-
3° ture were those castings made? A. I do not remember.
xQ. s 7. In answer to question 19 you speak of trying to
cheapen down the pressing process; did you succeed in getting a
pressing process that gave you good results, but that was not
sufficiently cheap?
A. We sometimes got some very fine records but the propor-
’ tion of goods records to the bad ones was so small that it was out
of the question to make them commercially.
xQ. 58. My question was as to the meaning of the word
“Cheapen.” A. Cost of product, I mean.
4° xQ. 59.. Because such a. large proportion were broken or were
unsatisfactory? A. Were bad. '
■ xQ. 60. In answer tp question 20 you speak of the casting pro¬
cess and your experience in that specific process; in your experi¬
ments was the mold heated before hand or how was that? .
xQ, 61. Was the molten material poured into the top of the
mold or was the mold dipped into the material, or how was that?
A. Generally dipped, as the pouring made streaks.
xQ. 62. Do you remember whether or not the temperature was
maintained at the dipping or how was that ?
A. We simply melted the material and as soon as it was molten
we would dip the mold into the material.
xQ. 63. In answer to question 22 you say that you turned the
subject over to Mr. Aylsworth to see whether he could not find
a good economical compound ; does that mean that you already
had a good compound that was not economical ?
A. I have already stated that we had a compound which some¬
times would give a good record, but so many of them were bad
that it was not economical and I wanted Mr. Aylsworth to find a
compound that would give such a percentage of good ones that
it would make the product a commercial success; that our losses
would not be so great as to eat up all the gain.
xQ. 64. Is the process described in your patent No. 713,209
(question 23) a good process for pressing records?
A. Yes, a very good process.
xQ. 65. But how about it for the same composition for casting
a record? '
A. You can use composition in pressing that you could not
use at all in casting; for instance .'you could use material that
would not melt but would soften to permit a pressing.
xQ. 66. Are we to understand that the composition and pro¬
cess set out in your patents No. 667,202 and No. 667,662 (Q. 24)
will give, some good cast records, but the percentage will be
small?
A. Yes, they will give some good records; it is entirely a ques¬
tion of the material, its characteristics. ,
xQ. 67. But I understand that the percentage of poor records
would be so great that those two patents are not commercially sat¬
isfactory, is that correct ?(
A. Well that depends. The process itself is all right provided
the compounds are all right, but the compounds, therein spoken
of did not give enough good records to compete commercially
with the process we already had, working mechanically..’ We were
competing against a commercial process already in vogue and in -
use and unless we could produce something better, and get more
for it or produce it cheaper, we could not compete.
1 ••vQ. 68. The commercial process already in use means the me¬
chanical duplicating that was formerly employed? A: Yes sin
' xQ.6 g. In your answer to question 38 you are speaking of
carnauba wax without any other substance being added to it when
you say that it cracked in all directions, does not solidify?
A. Yes sir, I am. • ,
xQ. 70. Do you regard carnauba wax as a "wax’ ?
A. It is called a wax, but it is a mixture of resins and waxes.
xQ. 71. Do you regard shellac as a wax? A. No.
xQ. 72. Do you regard asphalt as a wax?
A. No, it is not called a wax, although some of the members
10 of the family are quite waxy.
xQ. 73. As a rule are waxes miscible with the blank composi¬
tion; I mean the metallic soap mixture used for making blank
cylinders for phonographs.
A. I could not answer that question, whether all waxes are
miscible: I think most of them are, but if a new wax should come
in the market, it would be hard to say whether it is miscible or
not until you had tried it, because it might be misnamed as a
wax and not be a wax at all ; paraffine is not a wax but it is wax-
lilce.
20 xQ. 74. How long has carnauba wax been known by persons
in the- talking machine art? _
A. Oh. that must have been known from the earliest time in
the talking machine art. . .
r q. 75. If one in the talking machine art knew that carnauba
wax was miscible with the ordinary blank composition, that is the
composition for making the blank cylinder, would lie assume that
he could use it to harden the blank cylinder composition?
A. He might and might not according to his experience.
Hardening is not the only thing to be solved in the use of car-
30 nauba wax. • , . i
xQt 76. Confining ourselves for the present to hardening only,
if this mechanic skilled in the talking machine art knew that car-
nauba wax was miscibie with the blank cylinder composition,
would he not know that carnauba wax would harden that com-
P°a!°1 don’t know. Carnauba melts at a high temperature and
some waxes at the temperature of the melting of carnauba would
decompose and the result would be softer than when he started.
The subject is too. complicated to be able to theoretically detpr-
,• mine beforehand what is going to be the result, there might be
inter-actions that are not known; it depends on the composition.
xQ. 77. Does the blank composition used by the Edison Phon¬
ograph Works decompose at the melting point of carnauba? ;
THOMAS A. EDISON, 343
A.. I suppose some of it does decompose; ! think .when car¬
nauba is put into that mixture chemical reactions take place. I
do not know what they arc, but I am pretty sure ' they do, as
evidenced by the formation of gas and a lot of other products
that ape odoriferous.-
xQ. 78. My question did not assume that carnauba was added;
I merely asked whether the blank composition itself would de¬
compose at the temperature at which carnauba would melt ?
A. Yes, it distills and decomposes; you can keep it for a long
time at a certain temperature, or the temperature we use it at io
, and it will gradually blacken and decompose until it gets jet
black. .
xQ. 79. Do you know what reactions are taking place; I am
speaking only generally; do you know what happens to the blank'
composition if it is kept at the temperature at which carnauba
melts?
A. Oh, no, no one knows such things. The chemistry of
waxes is very little known ; they are most complicated mixtures
of high atomic weight.
.rQ18o. Is carnauba miscible with asphalt? 20
A. Yes, it is not perfectly miscible, but you can get it in com¬
bination.
xQ. Si. Can you name any wax or any waxes with which
carnauba is not miscible? -
A. I don’t remember any just now, but I suppose there are
certain waxes which it is not miscible with, that deciimpose at
a low temperature. . •
xQ. 82. In your direct testimony you have spoken of attempts
to make cast records by processes and the use of compositions
specified in your testimony and you say that the results were not 30
commercially satisfactory; do you remember anything about the
duration of the tijne during which the temperature was kept up,
in attempting to do this work ?
A. We generally melted the base compound and then added
the other ingredients and then when they were liquid enough
we used them. .
#0.-83.. You used them as soon as they were liquid enough
without further maintaining the heat? 4-' Yes, sir.
xQ. 84. And in the same manner with regard to all your at¬
tempts to' inake satisfactory cast records, I understand that the 40
mold was lowered into the molten material and raised as soon as
enough of the composition had adhered to it?" -i • >
A. Not in all cases.
344 complainant’s rebuttal proofs.
xQ. 85. Wliat other methods were employed ?
A. We poured them in, dipped them and raised the liquids
up into the molds.
■vQ.86. When was it that you turned over to Mr. Aylsworth
the problem of finding a good economical compound for making
cast sound records? (Q. 22.)
A. I cannot tell until I look up my records.
Counsel for complainant states that this information
will be furnished to defendant’s counsel by Mr. Ayls¬
worth, who is at present being examined.
RE-DIRECT EXAMINATION, by Mr. Dyer:
Q. 87. In view of the objection by counsel for defendant I
will ask you to read question 42 of your direct testimony and
state whether any statement is made therein that is in any way.
suggestive to you ? A. (Mr. Edison reads question 42.)
Q. 88. Have I misled you in any way or said anything that
is not correct? A. No, I knew all that before.
Signature and certificate waived. ■
Adjourned until Monday, February 25th, 1907, at the office
of Frank L. Dyer, Orange, N. J.
Orange, N. J., Thursday, February 28th, 1907.
Met pursuant to agreement.
Present— Counsel as before.
Complainant’s counsel offers in evidence copies of the follow¬
ing patents as exhibits for tile Complainant:
3° Patent to Edison, No. 200,251, dated February 19, 1878, and
the samc.is marked "Complainant’s exhibit, Edison Patent, No.
200,251.” .
Patent to Reynolds, No. 287,1 56, dated October 23, ’ 1883, and
the same is marked "Complainant’s Exhibit, Reynolds- Patent,
. No. 287,156.”
Patent to Tainter, No. 341,287, dated May 4, 1886, and the
-same is marked "Complainant’s Exhibit, Tainter Patent, No.
. 341,287.”. . ' ;■ .
Patent to Berliner, No. 372;786, dated November 8, 1887, and
4°. the same is marked ‘‘Complainant’s Exhibit, Berliner Patent No
372,786.’’ . ■
Patent to Harrington, No. 392,953, dated November. 13, 1888,
and the same is marked “Complainant’s Exhibit Harrington.
Patent, No. 392,953.”
Legal Department Records
Phonograph - Case Files
New York Phonograph Company v.
National Phonograph Company et al.
This folder contains material pertaining to the suit brought by the New
York Phonograph Co. against the National Phonograph Co., Edison, the
Edison Phonograph Co., and the Edison Phonograph Works in the U.S.
Circuit Court for the Southern District of New York. The case was initiated in
January 1 901 and involved territorial sales rights. The selected items consist
of correspondence from the period 1900-1905 regarding the context and
progress of the litigation. Related material can be found in the case files for
Thomas A. Edison et al. v. New York Phonograph Company et al. and
United States of America v. James L. Andem.
Portions of the court record for the case on appeal appear in Thomas
A. Edison Papers: A Selective Microfilm Edition, Part III, 117:385-973.
New York, Oct. 27th, 1900.' \ ;
Mr.. Leon P. Douglass,
• c/o Eldridge R. Johnson,
Camden, N.J.
My Dear Mr. Douglas s:-
Your letter of the 26th Just as hand. I will try
to see if I can put through the deal on the basis of $300.00. The New
3?ork Phonograph Co. , have held a Board mooting and considered the sub¬
ject and advised me that they could not accept this proposition. I will
try again and let you know. I am veiymuch inclined to think that Mr.
Easton is trying to buy this contract in dfiact I know that they have had
a number of interviews on the subject and their lawyers are now in con¬
sultation in reference thereto. If this is the case I doubt very much
if I can secure the license for $300.00.
Later I called to see Colonel Evans this morning and presented your
letter to him. As you probably know, Mr. Andera of the Ohio Phonograph
Co., is now located in. New York and is connected very closely with the
New York Phonograph Co., in regard to this new arrangement, of bringing
action against Edison and the Sub-Phonograph Co's. Mr. Andem is an
Bncle of Leeds of Leeds and Catlin Co. , and Mr. Leeds has become aware
of the existence of that contract with Bettini. Leeds wants to purchase
a license under the contract Just the same as you do and Andem is tiying
to work the matLer in his way. The New York Company has already consider
ed a proposition from Leeds. I think that if you want to pay $450.00
for a contract with them to license you, they reserving the right to
license Leeds or any one else in New York City, that I can put the deal
through. They seem to think that Leeds is willing to pay a price for
a similar license consequently they have grown a little stiff. .1 hardly
think I can put through the original deal giving you the sole license
under the contract for $600.00, but I do think if you will take a license
under the contract and some arrangements with them, that' will be legal
and hold water for yourself that I can put the deal through on the basis
of $450.00, You see I have to pay the Colonel at least $100.00 for put¬
ting this deal through, he wants $150.00, this would make the amount
$450.00. I think the New York Co., will accept $300.00 on this basis.
I am very much afraid if you do not accept this propostion and calculate
on paying $450.00you will lose the opportunity entirely as I know they
are getting very close and -thick with Easton. Mr. Easton was at their
office this morning for some time and I know that they are. now taking up
the question of this contract with him. If you decide to pay $450.00
for the contract and license under let me know at once by telegraph Mon¬
day morning as I am very sure in stating that I will lose the chance
of making a deal unless you accept quickly.
You will probably have to operate under the contract as the
New York Co., as I question very much Sif the New York Co., under the law
to give a license but they could- arrange with you to make records for
them under the contract and you in - turn buying the records back at the ■
same price you willed' them or some such scheme as that. I hope you will
let me hear from you at once if you wish me to do anything further,
therwise say yes or no positively and I will not give the matter -.any ■
more time. ■■ ^ .
-Yours very truly,
(signed) E.K. Hawthorne;
b309Oc
LS.O.Q..
Howard W. Kayes ,Eaq. ,
28 Washington PI.,
Newark, N. J.
Dear Six-:
In view of your request made to me and Mr. Andem thia morning
that v/e coma down to figure a and in view of your statement that the
Edison intaraata would prefer to make a payment in diacharga of the
claims of the various auh-companies than to incur the expanse and. un¬
certainty of litigation, Mr. Andem has considered the quaation of the
amounts which should he paid in discharge of the claims of the various
sub-companies , and T. herewith aubmit the sums fixed' by him. The neces¬
sities of the situation are such as I explained to you this morning
that an agreement with the Edison interests must be reached on or be#
fore Tuesday next.
Mr. Andem will agree with the Edison interests upon the following
terms; Mr.Andem is in position to execute contracts on behalf of the
ew lork and New England Companies. The sums to be paid on account of
claims of these two companies are given below and are to be paid
upon the signing of the agreements. With all lha ’ iu
>elow Mr • Andem has communicated and has eith r h C0“0a
letter or the assurance of authority to act ^’^ment bj
or ^ - - — on
charge of all claims for d m0n1‘ W°Uld inoludi3-«a Release and dis-
Pani.es above named and an agr^mont^/which ZZZ ^ *** aUb~Ct3m-
Edison interests should exercise c ^b-companies and the
. . ™90hn,
. MOV..S/QQ..
K.W.H. #2.
intai’aata to do business and to sell to dealers in the . territory of the
aub-companiea would be granted.
Although the liat given below doea not include all the sub-co'mpan-
iea throughout the United States, the list doea include every company
that ia at all important. Mr.Andem haa gone ovex* the figure a carefully
and believes that settlements might be made with the companies named
for the figures given and will agree to use his best endeavors to se¬
cure authority to enable him to settle at those figures. Ha haa au-
thox-ity now to act for New York and New England.
Hub-companies .
New York
New England
Wisconsin
Minnas ota
Ohio
Chicago Central
Kentucky
State Co. of Illinois
Missouri
Michigan
West Pennsylvania
Kansas
Iowa
Nebraska
Amount to be paid on
925,000
20,000
5,500
5 . 000
5,000
8,000
5 , 000
3,000
5,000
5/000
3,500
3, .000
■ 3,500
.2., 500
992,000
Settlement.
Yours very truly.
"ELANSEE"
W.E. Gilmore, Esq. ,
Orange,!!. J.
LEEDS & CATLIN CO. . .
MAKING • THE • LOUDEST • AND manufacturers
CLEAREST • PHONOGRAPH ■ REC- wholesalers . .
ORDS • AND • DEALING • IN • EDISON retailers of . .
PHONOGRAPHS • AND • SUPPLIES
AT • 53 • EAST • ELEVENTH • STREET. __
NEW .YORK, November 7th.
'klO l i - c.u ;
NOV. S--1M0U !•
!
I received the enclosed this morning and at once
called Hioks up on the telephone and did my best to get r..:.t
matters delayed? he said he had talked with jou on the
’phone this morhing without knowing any thing more and that
owing to the Graphophone people having conceded all the
demands Mr. Andem has made it seemed impossible to give
any reason for delaying signing the papers. Well I put it to
them pretty strong not to dose with the Columbia and I
hear tonight that they have succeeded in delaying things
' there. So that you will have a little more time.
Yours ^respootfully,
J{u0iA.JL ^>T>- Jl^ Ko* 4^ [ (
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n( 0 1
NATIONAL PHONOGRAPH CO., “
EDISON LABORATORY,
ORANGE, N. J.
ORANGE Nor. 8, 1900.
E. p, Leeds, Esq., _
53 33. 11th St.,
New York.
Dear Sir: ... .
I am in receipt, 0f your letter of the 7th, enc.losine communi¬
cation fromMr. Andem. The fact of the matter is that X am not at all
familiar with the situation, and X ha^e referred it to our attorney,
oudre Hayes, with instructions that he consider same and write you
fully. ,
Yours very truly,
• TSEO/XW
E
President.
as#® IFHarTOffi AsaswajE,
29, 1901.
Howard W. Hayes, Esq. ,
Prudential Building,
]>Tewarlc, N. J .
Bear Sir:
I enclose you herewith the subpoena that was left at the Hew
York office yesterday afternoon at 5:30, being received by Mr. Bodge.
I received it from him this afternoon about 1:30. I expect to see you
in regard to this and other matters within the next few days.
I talked with Mr. Edison this afternoon about your meeting him on
Thursday, but he does not feel very much alarmed and states that he
hardly thinks it necessary for you to see him at this time, although,
of course if you think to the contrary he will be glad to see you any
day and at any time you may set. Of course X do not want to bring you
up here unless it is imperative,. aB I know you have lots to do, and as
I have made arrangements to be in Newark Thursday afternoon next, I
shall of course be glad to Bee you there, so kindly let me know the
time either by letter or telephone.
Howard VI. Hayes, Esq..,
Prudential Building,
Newark, N. J.
Bear Sir:
Here is the first communication we have received regarding the
newspaper article on the suit of the New York Phonograph Co. against
Edison and others for $225,000 damages, with which , of course, you are
familiar. It is necessary that we get up at once a circular letter
setting forth our position in this matter to allay all fears^so far as
our dealers generally are concerned, and I should like, of course, that
atau'get this out for general distribution at the earliest possible mo¬
ment .
Yours very truly,
»3® liancnK Aseiwie,
f Feb. 15, 1901.
Howard. W. Hayes, Esq,. ,
Prudential Building,
Newark, IT. J.
The attached circular of the New York Phonograph Oo. was
issued about the same day that we Issued our notice. I stuck it in
Mr. Edison's drawer and handed it to him yesterday. I have also been
interested to know whether the circular was going to have any effect
with our jobbers, dealers, etc., but X am very happy to say that I have
heard nothing. The circular is printed on such poor paper that in
handling it it was torn entirely apart by me, and I have had to have
it backed up in the manner shown; they must be getting short of cash.
I send the circular to you for your information and assume you will keep
it with your other records.
Yours very truly,
[ENCLOSURE]
JjJorh Jf^bonoguapb (Jdmpan^,
ROOM 933, PARK ROW BUItDINQ,
13 to 21 par!? IRow, IFlew H?orI? Cttii.
prescribed by the
February 1, 1901.
Notice is hereby given to all persons using, buying or, selling Edison Phonographs,
Records and Supplies, within the State of New York, except through o r by the consent of the
undersigned, the exclusive licensees under the patents of Thomas A. Edison for the State of
New York, that they thereby render themselves liable to us for damages, under our contracts
with the North American Phonograph Company, of October 12th, 1888 (subsequently ratified
and confirmed by Thomas A. Edison, the Edison Phonograph Company, the Edison Phono¬
graph Works and others), and of February 6, 1889, giving us the exclusive right to use, rent,
or sell to others to use within the State of New York, Phonographs an< all the supplies neces-
saryfor the same, untifffiarch 26th, 1903, and for such further timeidhs
contracts before referred to. t
Proceedings in layr have already been instituted by this Ci inpany in the Circuit
Court of the United States for the Southern District of New York agai list Thomas A. Edison,
the Edison Phonograph Company, the Edison Phonograph Works an ‘the National Phono¬
graph Company to enforce such exclusive rights by injunction, and alsoj >r damages and profits,
and all parties infringing the same are hereby warned that they nius immediately cease so
doing or answer to this Company in damages.
The New York Phonograph Company having paid for its eiclusive license before
named, the sum $223,000 cash, which license is still in full force and effect, it is determined
to enforce the same strictly] and Dealers who have purchased Phonographs and Supplies from
any of the above named infringers, and who . desire to continue their business and avoid the
trouble of legal proceedings, should at once communicate with the officers of this company and
obtain from them authority to pursue their business under its sanction. |
NEW YORK PHONOGRAPH COMPANY,
I'M. Fmjs-rn
Attest: Scott Trbmain, ;
Secretary.
Elisha K. Camp,
Eouis Hicks,
Of Counsel
Thomas A. I3dison,TCsq. ,
Llewellyn Park,
Grange, N.J.
Dear Sir:
Phonograph Co
As you are well aware, a subpoena issued by the clerk of the
Circuit Court of the United States for the Southern District of New
York and under the seal of the court was duly served upon you on the
13th day of July, 1962, directing you to appear and testify in the above-
entitled suit in equity and to bring with you certain documents enumer¬
ated in the subpoena. A witness fee of ?3. was paid to you and accept¬
ed by you at the time. You were directed to appear and testify on July
35,1902, at .11 A.K. before John A. Shields ,J5oq. , at his office in th'e
Post-office Building, New York City. You did not attend at the time and
Place named, nor did you do anything, except totally to ignore the sub¬
poena. Neither the office of your counsel , Howard W.Hayes.Nsq. ,nor that
ox Messrs. Robino oh, Biddle « »„rd »» Kr.Bo«»e.„. y„„r laboratory. o,„!d
«v. mo any information .hatever in regard you or ^
i°” 10 «***> in accordance ««, ,1,.
subpoena.
Too* testimony io necessary the co,pl»i„„t.,md , ^
•ooux. your testimony ,,a IMrt possible friction « annoyance ,.o
you The purpose „ this to Bive you „ opportune
1003,11 A.M.. before ^.shields e;t the same -place Tf k '
receive from you such If, however, 1 do not
- — — “^r o“ ™ r: — -
your poaaeaaion or under your control,! shall be compelled at once to
aak the court for an attachment 'against you. I hope , therefore , that you
will communicate with me before 4 P.U. Monday, July 28,1903.
Thomas A . Till s on^jca a . , TTnited states on the r»lR.i,{on of Row
Llewellyn Pwk, - '’’ork Phonograph Co. va. Thomas A.m-
Orange.W.j. laon.
Dew Sirs
I hereby give erclioit notice to you. to vour counsel, Frederick
F, Guild, Hbq. ,0f Vmx*mxifmtXt*xx Newwrk.N. J. .and to the solicitors of
record, Messrs. Robinson. Biddle & tfard.ln the ault brought against you,
the National Phonograph Co. and others, In the rr.s. Circuit Court, South¬
ern District of New Torfe.for which purpose I aend a copy of thla letter
to eaoh of you.
On July 31, 1003,1 via Honor, Judge Laoombe.on the relation of the New
Tcrfe Phonograph Co. .signed on order directing you. Thomas A. Edison. to
appear In person befori* the circuit Court of the united states for the
Southern Matriot of New Torlr.on Aug, 6. 1003. at 13 o'olook noon In the
Court Room at the Post-Office Bull ding, in New -otfr city.to show cause
ehy you should not b. punished for contempt by reason of your neglec,
DDWy B«»Poena aerved upon you on the ieth day of Ju¬
ly. 1903, directing you to appear and testify and to bring with you o«r-
TJ~ **'“* *• - - - w
When the motion to punish y0U for contempt was called on the ««*
Z? A~°° '* — - - court that X had b^l™
ZTonT - »how cause and for that
.hould,«otCb.TJilsh!lTU “ °WOl*tUaUy •* showing ' cause *hv you
:31o”rr1rr. — -
— a* jt: z. ;:z:t mwu*' °°°m °f - ««
*»*• » .. f ZJZZ*"” aU‘"U*«-‘" *»• °«» of
tM ®ubPo*na, but thtt Y°" **'* - •"”*
« m t, r^nl UL. Z "™ — — * ~ M
N»w Torlr. Aug. 7, 1003.
T.A.S. *3.
order o f the court. Tour oounnel Mr. Guild. to whom you referred be.hna
Given me no explanation whatever as to why you failed to appear and
testify In aooordonoe with the uubpoena.nnd, although I notified Mr.
Guild, on Monday, Aug. 4. of Judge Laoomhe»B order and notified also the
person In charge of your laboratory and notified also P*r. William 55.011-
more.your business associate at Orange. New Jersey, of the said order di¬
recting you to appear before Judge haoombe on Aug.G.aa above stated. I
could obtain no positive information as to your whereabouts. Tour
counsel .Mr. Guild, refused to aooept service of Judge Laoortbe's order for
you* ^ representative, Herbert W.Andem, called at your resldenoe and at
your laboratory Aug.4,inp3.atated at each Place that he desired to kks
uePve Judge Laoombe's order upon you and was informed that you had' been
away for a week and would not return for a week. Mr. Guild infoxmed me
/th^t thin statement was inoorreot.but Mr. Guild refused to ten ne when
when X inquired from him over the telephone that he understood that you
had received a telegram from Abr on, Ohio. and that you had gone there.
desire a direct and positive statement from you as to whether
you ore seeking to avoid the service of Ju(lga L*oombe.B ord«r directing
you to appear before j,lm Aug. 30. 1003. , 8
Tours truly,
- v.
Oounsel for New -orir Phonograph Co.
Newark, N. J. Aug. 15, 1902.
Mr. Thomas A. Edison,
Orange, N. is.
Dear Bir:-
At the request of Ur. Prederick T, Guild, I hare made a
thorough search In the offloe of Mr. Hayes for oertain assignments,
agreements and other documents relating to the phonograph buBlnes,
and particularly suoh documents as are specified In a certain
subpoena duoes tecum, which I understand was served on you In con¬
nection with the suit of the New York Phonograph Company against
the National Phonograph Company and others, and beg to state, that
I have been unable to find any papers relating to this action ex-
oept ooples Of such papers as are actually on file in the Court
office, and that I could not find any Of the papers enum¬
erated in the subpoena above referred to.
Yours truly,
m/m
c/o Edison Portland Cement Co.,
Stewartsville, IT. J.
Dear Mr. Edison:
X enclose you herewith your affidavit in the case of
the Dew York Phonograph Co. against the national Phonograph Co., which
has been prepared "by Mr. Martin, who is connected with Judge Guild
in Newark.
On page I, at the point I have queried, he has given figures as
to the cost of the Cement plant which are not correct. Mr. Martin
asks me to have you make such changes in this as are necessary.- I
told him that the plant has cost in the neighborhood of $2,000,000,
including all experimental work, hut that I preferred that the changes
he made by you rather than hy myself.
Page 3 indicates that Mr. Eisher, who is connected with Judge
Hayes, has looked through Judge Hayes* office for certain documents in
the way of contracts, etc., that are supposed to he in the possession
of Judge Hayes. Mr. Eisher's letter attached, dated August 15th and
addressed to yourself, explains this matter. It of course goes without
saying that if Judge Hayes has any of these documents in a safe deposit
vault, in his safe or in some other receptacle with which he is personal¬
ly familiar, nobody can obtain them until he gets hack, which we hope..
sheet No. 2 date, 8/l8/02 . national phonograph co. to Thomas A. EdiBon
Wi41 you kindly sign this document with your full name, have it
properly attested before a notary. Public and then return it to Messrs.
Guild & Martin, Prudential Building, Newark, N. J . , in the envelope
enclosed herewith.
It is very necessary that this should be mailed to them Y/ITHOUT
PAIL tomorrow. (Tuesday) so that they will receive it Wednesday morning.
Enc-
[ENCLOSURE]
¥:■
PROTECTS.MINING COMPA]
HELENA, Mont.^ob. 1 8^-Tho SupreLo
Doaton and Montana Mining. Company to .
accuro ovldonco.ln hla suit : for thrco-
fourths Intorcat in tho Cotnancho mine, .
V? ir ^3
AS 3W 'BRED bv E. W. H.
v " 27 1903
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pC/T’t.W'':
Newark, N. J, February 27th 1903.
Thomas A .Edison Esq, ,
Ft .Myers, Florida.
Bear Hr .Edison:- \ Cu-nr* J'l, P. Co. 5^ 4/C_
I have your letter of the 18th inst, hut have delayed
writing until matters had shaped themaelveB a little hit and 1
oould give you a full report .
Randolph must have misunderstood my massage to him oher
the telephone, as when he told me about the subpoena I told him to
get the papers together with the expectation of examining them be¬
fore deciding as to Whether they should be produced in evidence.
The clipping you enclosed is not in point, as that is a case where
an effort is made by a stockholder to get at the books of the, com¬
pany for improper purposes. In this case, on the face of it the
books and papers are asked to be produoed by subpoena as evidence
in a case. The principles governing the two cases, however, do not
vary materially. The rule of law is that where a paper is hot re¬
levant to an issue and tends to disclose the private affairs of. any
person or corporation, the court will not order its production.
In accordance with your instructions I retained John V,
Griggs, who was formerly United States Attorney General, to assist
me. in that branoh of the case. He. agrees with. me entirely in my,-,
theory of the oase, that ±4. they have not as yet produoed any evi- '
dense whatever to substantiate their, olaiin, and that these papers
are irrelevant and should not he produced as they tend to disolose
the private affairs of yourself and the National Phonograph Co.
Hardin has been examined as a witness, hut they got very little
satisfaction out of him beyond the production of a few papers which
are on file Anyhow in the Chancery Clerk's office in this state.
Hardin was very friendly and volunteered no information. He also
testified the reason the hid was made in your name for the assess
Of the North American was because ha wanted your personal respon¬
sibility on the laid arid not that of a corporation about which he
knew nothing . Bandolph was examined to-day. 1 had Griggs there
with me. Bandolph put on the reoord a statement that he refused
to produce any of the hooka or papers in question because they were
not relevant to the issue and tended to expose the private affairs
of yourself and the National Phonograph Company for the benefit of
business rivals. He made a good witness. He remembered that the
cheque of $7500 whioh was produced by you and which had been given
to Hardin at the time of the sale was a loan from you to the Nat¬
ional Phonograph Company whioh that company repaid. He also rememb¬
ered that When 1 handed the cheque to Hardin that I stated it was
for and on behalf of the National Phonograph Company:; Hioks will
try to get an order from the oourt compelling Bandolph to produce
the papers In his possession which we will fight tooth and nail;
and if nsosssary take to the Court of Appeals, i don*t think that
Wf have any reason to expect that any books or papers disolosing
TOiomaa A.TOdison Wo. 3.
private 'business affairs will be ordered to be produoed.
Mr .Gilmore met Attorney General Griggs at my office this
afternoon and was very much pleased with him and glad to hear his
view of the case, He has gone over the pleadings and testimony so
far given and expressed his opinion that so far the complainants
had not put in evidence a single paper tending in any way to
prove their case,
I saw Easton yesterday and told him about the condition
of the Graphophone -Grand suit in Germany. He seemed somewhat sur¬
prised. He telephoned me to-day that they would be willing to give
a license under the Graphophone -Grand patents in ail the Countries
of where they were taken out for $5,000 if we tr'ould with-,
draw opposition to them and ha-« them sustained by decrees. I told
him that the figure was out of the question and that $3,000 was the
limit. He finally said he would accept that and wanted me to make
a draft of the papers. 1 will do so at onoe, but wanted to let you
know immediately the situation. He also wishes to oarry out the
plan you suggested of each party ^sustaining such patents as they
want to by suits against the other and giving a license after the
deoree. I told him that was satisfactory so long as the Graphophone-
Grand deal went through at the 'same time. He then asked that in
addition to the patents, (the numbers of whioh you gave Mr .Peltier )
we should give him a license under the . built-up . reproducer , ,~i -told
him we would not do that and would expect to push the oases for
moulding and for that reproduoer and not mice them in any way part
of the compromise. He demurred for a while at this hut finally
agreed to the arrangement without them.
In addition to the patents for outting, the numbers of
which you gave Mr.Pelzer, it has occurred to me that possibly the
Aylsworth patent for a blank might be worth sustaining . Aylsworth
tells me that it was a special blank used for recording but was not
very successful and is not used now, but that it or something like
it might be used in the future by some record makers. Aylsworth
thought-' it would be a good plan to sustain that although at the ex¬
pense of giving a license to the graphophone people under it, so
that we could UBe it against small record makers who might spring
up in the future and want to use a blank coming undsr the c lairds' of
that patent. I enolose a copy of the patent so that you can look
it of or and see whether you want to include that in the patents.:
upon which suits are to be brought. •
I hope that you find the fishing good and only wish I'
could' get'’ away for the same purpose, but the trouble is that. l’ii;
have to work for a living. j-.
Yours very sincerely, '
Bno . 1 .
Dictated
Newark, September 10, 1903,
lin. E. Gilmore, Esq., ,
National Phonograph Company,
Grays Inn, 52 Grazien Road,
Holborn, England.
Dear Mr. Gilmore:
Mr. Marks writes me as follows: "Mr. White has seen
a large corner building in Clerkenwell Road, Merchant's District,
/six floors, which I am guaranteeing the rent for - 1420 per annum,
but we have to pay 1170 to get in. This guarantee I must aBk Mr.
Edison or some one to give me an indemnity for,' as , naturally , I
do not want to be liable for 1420 per annum myself. I do not like
to sign it as attorney for Mr. Edison, it. being a financial matter,
so I hare given my own name in preference."
I do not quite understand why Mr, Marks has refer¬
red this matter to me instead of to you. I think he should under¬
stand that I only aot as counsel for the Rational Phonograph Company,
and that all matters of importance must go to you. Please do not
say anything to him in regard to this, but I write you about it
in order that he may understand your authority in the matter, and
that I act only under your instructions. •
Everything seems to be going on here as usual. There
is nothing new in the New York Phonograph Company case except a de¬
sire on Hicks' part to have you here for examination. There will,
however, he no trouble about that, as, if he tries to make any troub¬
le about it, Mr. Griggs will arrange to have you committed for
contempt and fined c
i dollar for not appearing, and take the matter
~t° the Circuit Court of Appeals, and from there to the United
States Supreme Court.
J I find that in all probability, the Western Electri c Com¬
pany is backing Gladstone in the sale of his battery supplies. We
have been unable to purchase any dire otly from his company, but
have just gotten some from the Western Eleotii c Company. I eapeot
to file a bill against them, as thatls the only wsgr to reaoh. Glad-
r — The ^raphophone Company has mm aged to interest Fahnestock
| in their business, and are now openly backing the Kdw York Phono-
| graph Company. I learn, however, that Fahnestock is getting tired
| of advancing money, and as Hioks will not work without being paid
1 for .it, there has been a cessation of activity.
It seems to me that this will be a good time for Diokinsonb
| suit for a receiver for the Graphophone Company to be started, and
will consult Mr. EdiB on about the matter. Dickinson himself is evi¬
dently unwilling to spend any money, but as the Graphophone company
is going down the hill so rapidly, I think it would be as well for
us to give them an additt onal puBh.
&a/<y) 'y/Zi'r/ZH/fuS/tr/r/u/^i';:'
(?r/t / !■ ' 'l rf//i
C/tte/ceifc
Hew York Company vs. National Co:
Mf March 27, 1905.
Charles 1. Buckingham, Esq.,
38 Park Row,
New York City.
Dear Hr .Buckingham: —
In looking over some old. papers yesterday
that came up from Judge Hayes' office I finil a number of printed
exhibits that were evidently used in some of the early suits
against the Edison Phonograph' Works on the Bell & Talnter pa¬
tents. I find in these papers a number of interesting things
that have some bearing on the New York Phonograph Company suit,
and of which you may not have been informed.
In a "Preliminary Prospectus of the Metropolitan
Phonograph Company", issued "Por Private Distribution" , reference
is made to "the period covered by the said exclusive license,
namely, fifteen years". A similar statement appears in the "Pre¬
liminary. Prospectus of the New England Phonograph Company" .
Sometime in 1889, an explanatoiy circular was issued
by the North American Phonograph Company, from which 1 quote:
"The North American Phonograph Company constitutes
itself to all intents and purposes the parent company, in the
Charles L. Buckingham, Esq. - 2
promotion and development of the phonograph and phonograph-
graphophone business . It has had organized and licensed
within prescribed territorial limits , local companies which
have exclusive control of the business, within the limits
of the territory assigned to each, somewhat after the manner
in which telephone companies have been organized; but upon
more liberal terms, for the reason that the field of oper¬
ation of these instruments is so immeasurably greater than
that of telephones as to warrant better terms to the licensees
and lower prices to the public, while at the same time ade¬
quate returns can be. readily secured to the companies. A
cash paymeht lias been required from each for their exclusive
C. 1. ' Buckingham, Esq. - 3
Phonograph Company at the end of the five years, stock in
the various local companies to the amount of $4,100,000.
Por this the sub-Companies will receive an extension of .their
exclusive license for nearly ten years more."
It seems to me that these statements, and particular¬
ly the words which 1 have underscored, make it quite clear, as a
matter of contemporaneous evidence , that it was understood perfect¬
ly well that the several extended licenses expired March 26,
1903, and also that the cash payment in every case only applied
to the first term of five years.
Yours very truly,
PLD/ta.
J^Jeacu
%v/ey/-a///f'(&7r
8frn/i/?$08yieu/(!fy!l
April 28, 1505 .
Charles I. Buckingham, Esq.,
38 Park Row,'
Dear Sir: —
New York City.
In accordance with the request recently made hy you
and Mr. Pelzer , 1 have gone over the Edison patents with a view
of ascertaining the facts as to expiration of the patents under
which we are or have Been operating in the sale of phonographs,-
Blanks, etc., omitting all process patents used at the Works,
since there is no likelihood that we will ever care to do any
manufacturing outside of New Jersey. 1 have a list of the ■■for.-,
eign patents- upon the Edison- inventions in this art, giving us¬
ually the dates of application and of issue, but 1 have no way
of determining what inventions are disclosed in these various
patents, and do not see how this information can be obtained
except by looking up the foreign patents in the Patent Office
library or possibly in the Astor Library. The patents which are
most likely to shorten the term of the United States patents are
those of countries such as Prance, Italy, Spain, ‘etc., where the
grant of a patent occurs very shortly after the filing date, hu
Charles 1. Buckingham, Esq. - 2
The following report is therefore based almost wholly upon the
Pelzer letter of May 10, 1900.
I find that the following patents either have now
expired or will have expired by October 1, 1905.
382,416 - May 8, 1888, Return Screw - will expire May 8/05
382,418 - May 8, 1888, Blank with Tapering Bore. Probably
has expired with Austrian patent, but would expire
May 8, 1905 in any event.
382,462 - May 8, 1888, All Wax Blank - will expire May 8/05
if it has not already expired.
386,974 - July 31, 1888, Tapering Mandrel - has expired
393.465 - Nov. 27, 1888, Turning-Qff Blank by diagonal
knife - has expired.
393.466 - Nov. 27, 1888 - Retarded Diaphragm - has prob¬
ably expired with French patent.
393.966 - Dec. 4, 1888 - Art of Recording by forming abrupt
waves -j3ame as 393,466.
393.967 - Dec. 4, 1888 - Art of recording by cutting the
groove - same as 393,466.
393.968 - Dec. 4, 1888 - Recorder with cutting edge in ad¬
vance of stock - same as 393,466.
397,280 - Feb. 5, 1889 - Retarding Devices , broad patent -
has esqpired.
400,646 - Apr. 2, 1889 - Glass Diaphragm - has expired.
414,760 - Nov. 12, 1889 - Travelling Chute for chips - has
expired.
430,274 - June 17, 1890 - Metallic Soap Blank - has expired
430,278 - June 17, 1890 - Curved Edge Recorder; Ball Repro¬
ducer; Floating Weight - has expired
448,780 - March 24, 1891 - Diagonal Knife for turning-off
blanks - has expired.
Charles L. Buckingham, Esq. - 3
465,972 - Dec. 29, 1891 - Split Eeed Nut and Spring;
Spring lock for End Gate; Knife Passing through
chute; lift lever; knife , stem and clamp. Has
expired. ' ...
484.583 - Oct. 18, 1892 - Jewel Recorder - will expire
Sept. 8, 1906
484.584 - Oct. 18, 1892 - Jewel Reproducer^ - will expire
Sept. 8, 1905. 7
499,879 - June 20, 1893 - End Gate carrying outer hearing -
has expired.
622,843 - April 11, 1899 - Bloating Recorder •- will ex¬
pire Sept. 8, 1905.
The following patents are important, in that we either .
use the invention or it is quite likely that we will want to use
the same. I cannot say whether they have expired or not, Because
of my lack of data as to foreign patents. These patents are as
follows :
400,648 - dated April 2,
mixture of wax,
acid.
1889.
such
Covers Blanks made of a
as ceresin, with stearic
• ,*<i0 ‘ Sr* 8;pt* f°> 1890« Blunt Edge Recorder. We
deposit ion ?rfnln w 8hJP°t cases (in Eisoher
stylus emBodiesmthe invent ioiTof°thi s^atentf
454,941 - dated June 330, 1891. Built-up Diaphragm.
456,301 " Iho™yiSi|U?eU86ea^cove.
Charles L. Buckingham, Esq. - 4.
$
414,761 - dated November 12,
ternal ribs.
Tubular blank with in-
In addition to the patents above enumerated, we are,
of course, using' the Model «C« Button Ball patent, reissue No.
11,857, which has many years to run. The application for this
patent was filed September 21, 1899, which is,. of course, several
years after the North American Company became insolvent. This
patent will not expire until June 26, 1917.
I am sorry that 1 cannot give you more complete infor¬
mation, but this can probably be obtained, as 1 suggest, by look¬
ing up the foreign patents which are undoubtedly on file in the
Patent Office Library, and which can be found from the patent
numbers and dates which 1 shall be pleased to send you at any
time.
1 remain,
Yours very truly,
DH/iiM.
Diotated.
ibHARLES L. BUCKINGHAM,
Mr. Thomas A.Edison,
Orange, W.J.
Dear Si.r:-
New York, Hoy 3,1908.
We this morning settled the injunction decree and the or-
der staying the injunction before Judge Hazel, and all very much to
my satisfaction.
Hicks wanted an injunction against the national Phonograph
Company covering all phonographs made by it. The order, however,
is modified so as to apply only to such righto as the complainant
may have under its contracts with the Worth American Company.
Hicks also wished to have us, ponding the appeal, give a
bond for all damages, profits and coots. He also asked that we be
required to file with the court, ponding the appeal, weekly state¬
ments specifying all of our customers, the amount of business fto. ,
according to Judge Wheeler's decision in Edison v. American Muto-
soope Company. All of this .however, the court denied, except that
we are to file a bond before the first of July in the amount of
$10,000, as security for their profits, damages and costs. Of
course Hicks wanted a very much larger bond. This circumstance
would hardly be to the advantage of complainants for advertising
purposes when it is remembered that the ten thousand dollar bond
is to cover not merely their costs but all of the profits accruing
to us or damages suffered by complainant during the poriod of ap¬
peal.
Specifically ,the stay requires that our appeal shall he
perfected and a bond provided prior to July 1,1905, in which event
the stay will he effective until the next tern of the United States
Circuit Court of Appeals; and upon docketing the case as a preferred
cause at the next term of the court, the otay is to be continued
"till the hearing, decision and mandate of said United States Cifc-
ouit Court of Appeals. "
Two or three other objections of ours were agreed to by
the court, so that thainjunction decree and Stay comply fully with
our requests, except that I wished to give a five thousand instead
of a ten thousand dollar bond.
Legal Department Records
Phonograph - Case Files
United States of America v. James L. Andem
This folder contains material pertaining to the criminal suit brought
against James L. Andem in the U.S. District Court for the District of New
Jersey. The case involved Andem's alleged forgery in representing himself
as the secretary of the New England Phonograph Co. in May 1 905. He was
found not guilty in May 1 908. The selected items consist of letters and other
documents from 1 907 and 1 908 concerning the context and progress of the
litigation.
[FROM ROBERT H. MCCARTER]
f
t
Newark, N. J. September 26th, 1907.
Hon. John B. Vreeland,
United State s Attorney,
Newark, N. J.
My Dear Judge :-
Obedient to your suggestion I hog to present a short resume
of my views of the law in reference to the alleged forgery by James
L. Andem.
A bill in equity was filed in the United states Circuit
Court for the District of New jersey on May 15th, 1905 in the name
of the New England Phonograph Company. To this bill a red wafer
seal without any impression on it whatever was attached and under
the seal was written “Attest JameB 1. Andem, Secretary" meaning "This
is the seal of the Company". it is a fact that the red wafer was
not the seal of the company nor was Andem its secretary and that An¬
dem in filing the bill with that false seal and false attestation
was guilty of uttering or procuring to tie uttered a forged seal.
It will be shown by indisputable proof not only was this red wafer
not a seal of the company but that Andem knew it was not and that
as he was not the Secretary of the Company he had no authority what¬
ever to attach the wafer to the document in question.
Upon this assumed state of facts my view is that the crime
of either forgery or procuring or uttering a forgery was committed.
The General Statutes of July 7, 1898 (3 U. S. Compiled
Statutes page 3652, section 2) provides,
"P** whe5 any offense is committed in any place, jurj
diction over which haB been retained by the United States or ceded
to it by a State, or which has been purchased with the consent of a
9
#2. J. B. V.
State for the erection of a fort, magazine, arsenal, dookyard, or
other needful building or otruoturo, the punishment for which
offence ic not provided for by any law of the United States, the
person committing such offense shall, upon conviction in' a oirouit
or district court of the United Statoa for the district in r/hioh
tho offense was committed, be liable to and receive the Bane punish¬
ment as the laws of the State in which suoh place is situated now
provide for the like offense when committed within the jurisdiction
of such state, and tho said courts are hereby vested with jurisdic¬
tion for such pm'poiie; and no subsequent repeal of any such State
law shall effect any suoh prosecution".
There is no provision in tho Federal Statutes for the
above mentioned crimes so that we turn by force of the quoted pro-
vioions, to the Hew Jersey Statue as well ao to the common law. The
Statute section 197 of the Crimea Act roads,
"Any person who shall falsely make, eater, forge or
counterfeit, or cause, counsel, hire, command or procure to be false¬
ly mads, altered, forged, or counterfeited, or willingly aot or
assiot in the false making, altering, forging or counterfeiting any
character .»••* with Intent to prejudice, injure, damage or
defraud any person or persons, body politio or corporate, or who
shall utter or publish or cause, counsel, hire, command or procure
to be published ao true any of the above faloo, altered, forged or
counterfeited matters ***• knowing the same to be false, forged or
counterfeited, with intent to prejudice, injure, damage or defraud
any person or persons, body jiolitio or corporate, shall be guilty
of high misdemeanor,”
try view is that the affixing of the false seal v/lth the
pretense that It was tho genuine seal of the company to this docu¬
ment was directly within tho portion of the statute above quoted.
In Graham vs. People, 1 Park. Criim. Reports, 141, it was
held that tho forging of a stamp or corporate instrument was tho
subject of a forgery. It would seem too that this word character
was put into the statute to oover just such devices as seals and
other like symbols, What other purpose did the legislature have in
using the word "character" if it was not to convict one of falsely
simulating a symbol like a seal and seeking to evade an indictment
#3. J, B. V.
on the ground that ho had written or printed nothing.
Rogardlens, however, of the statute, the offense was a
forgery at common law. Hr, Justice BlaokBtono defines the word
"forgery" “The fraudulent making or altering of n 'writing to tho
prejudice of another’s right”, 4 Black, (Cooley) p. 247,
Bullor J, defines the word "The making of a false Instru¬
ment with intent to deceive,
Baron Byre says "A falsa signature with intent to deceive
the false making of an instrument which purports on tiie face of
it to ha good and valid for the purposes for which it was created,
with a design to fraud".
It Should bo borne in mind that although it oar, be
proven that Andem had no authority or power, or apparent authority
or power, to attest the seal for the reason that he was not the agent
or Secretary of the corporation, yet it is not the signing of Andon’s
name that is claimed to bo a forgery or counterfeit, but it is the
affixing of the seal and attesting it, l.o, stating it to be tho
seal of the Company which constitutes the crime.
I am fully aware that if one executes an instrument pur¬
porting on its face to be executed by him as agent of a prinoipal
therein named, ho ia not guilty of a forgery though he has in fact
no authority from euoh pornon to execute it, because there in in
fact no false making of tho instrument, but merely a false as sump¬
tion of authority.
Of course, however, in this anno, thoihot of Andem having
no authority to affix the coal is a link in the chain of tho act
of forgery complained of. And it ic forgery to attach one’s name
to an instrument when dOi« .with intent to defraud. Wharton o
Criminal law, 4th Kd. Sec. 434, People v. P<eaiook, 6 Cow. 72 R. vn.
#4. J. B. V. J
RogGra, 8 th G and P 629."
I think, therefore, that it is plain from any definition of
forgery at common law, that tha affixing of a seal which is in it¬
self a counterfeit, comas within the definition of tho -word forgery.
It may ho asked what is the meaning of the torn
"counterfeit" . I find Webster gives the following definition -
"That which is made in imitation of something with a view to de¬
ceive, by passing the false for the true."
The law seems to bo settled that the forgery or coun¬
terfeiting of instruments need not bo perfect in its resemblance to
tha kind it was designed to represent, it is sufficient that it be
calculated to deceive and that too not exports or persons of exper¬
ience, or very cautious persons, but persons of ordinary observation
or ordinary business capacity.
Geo 17 H. O', haw 327} 60 ed. 576} IT. G. vs. Kitcholl
1 Bald, C. 0. 336.
If tho bill be filed without tho authority of the
Company, if tho seal affixed and attested is a forgery, than the
Company have been defrauded by the bringing of a suit which Andem
knew must be defeated by reason of the release given as aforesaid,
they being cojtpolled by a false representation to pay the costa of
such a proceeding. Not only are they fearful if Andem be allowed
to bring similar notions in other states that great loss will be
further sustained, but they believe that it is time that the criminal
law should step in and put an end to acts committed v/hieh are con¬
trary to the criminal lav/ of this state.
As to the form of the indictment reference ife made
to the following cases:
State vs. Jones, 9 H. J, law, 357.
State vs. Robinson, 16 IT. J.. law, 507;
#5. J. B, V,
•
State ve* Van Harfc , 1? If, J, Law, 327$
State vs. Eodotralce , 39 H. J* Law, 363$
State vs. Van Houton, 3 N. J. Law, 420$
Bohr vs. State, 60 H. J» Taw, 376,
It would therefore appear that the aritse of forger y as
defined either at common law or under the at at uteri han been commit¬
ted. The gist of the action 1b the uttering of the forged coal by
filing the paper In Trenton in a building on a territory ceded to
the United St ate b and therefore the Federal Statute above referred
to applies. See 24 Fod. Rep. 726, 71 cd. S45,
Yrhile it in true that if this offense were being prosecu¬
ted in the State court the tv/o year's limitation would apply, yet
section 1044 of the United Staten Revised Statutes, plainly applica¬
ble here in view of the committment of the off on bo in the federal
territory, provides that no person shall be procooutcd, tried or
punished for any offense not capital •**« unleus the indlotmont is
found within three years next after such offense.
If any further doubts present themselves to you, however,
J£r. Herbert W. Knight or I will be glad to endeavor to dissipate
thorn.
vm/im,
Yours very truly.
i i
Hr. E.D. Dyer:
The "Morning Star", Newark, H. J., of to-day,
copy of which I hand you herewith, has an article hy Andem and
his crowd in the New England case. In the absence of Mr. McCarter
and yourself at Trenton, as well as the absence of Mr. Knight, I co
could not, of course, arrange for an answer to be made, and I did
not care to make any statement myself. I called up the "Star",
however, and succeeded in getting at Mr. James Martin, the Presi¬
dent, and told him that we did not consider that the article
should have been put in in any such way without at least giving
us a chance to set forth our side of it. He stated that they had
always taken the stand that no article should be published until
both sides had been heard and that this was one of his standing
rules. It looks, though, as if the rule had not been followed
out in this case. He was perfectly willing to put in any state¬
ment that I cared to make, but I told him that I was not prepared
to make any statement but would refer the matter to you so that you
could prepare a statement, or, on the other hand, that I would
refer it to Mr. McCarter so that he could submit a statement.
I understand that Mr. McCarter will be back about 1 o'clock,
and to this end I have just written him a letter asking him to
make a statement for us, denying all the allegations in toto, and
stating in substance that matters of this kind we do not care to
bring before the public for adjudication, as the. proper place is
the Court. I do not suppose that Mr. McCarter will want to make
anything more than a general statement, if any, however, we should
make some reply, and I wish, therefore, if you get back in time,
that you would take the matter up with Mr. McCarter and formulate
some answer to offset the statements contained in this article.
I am going to Hew York; otherwise I would be here to discuss
EiE.Dyer <
(2)
10/3/07 .
it with. you.
I would, say further that Mr. Edison iB very much incensed
that an article of this kind should he put out hy a local paper,
without at least giving us an opportunity to refute their state¬
ments.
10/3/07. W. E. Gilmore.
Enc-
P.S. Mr, Martin will he absent this afternoon, hut stated that
if we desired to communicate with them we should call up Mr,
Carper, to whom he will refer the matter.
Oct. 3, 1907.
Robert H. McCarter, Esq.,
McCarter & English,
Prudential Building, Newark, N. j.
Boar Mr. McCarter!
1 tried to reach you on the telephone this
morning, overlooking the fact that you were to he in Trenton, and I
understand from your office that they expect you hack about 1
o’clock.
I wish you would secure a copy of this morning's “Morning
Star" and read over the article on page 8, headed “Thomas A.
Edison Seeks Belays in Phonograph Suits.” I realize that you
have Just been brought into this case and may not, therefore, be
thoroughly familiar with all of the details.
I called up Mr. James Martin, the President of the- company,
this morning and told him that in the absence of all of our attor¬
neys Mr. Edison and myself desired to emphatically object to
their putting out articles of this kind* without at least hearing
our side of the story. Mr. Martin stated to me that his policy
had always been never to insert articles of this character until
both sides had been heard, but it looks very much as though his
rule had been broken^ in this instance. Mr. Edison is very much
incensed, as well as myself, that statements of this kind should be
made, knowing that they are far from the truth. Furthermore, I
do not see why. the Newark pap-r should go on and discuss the
$10/3/07
Exhort JT. MoCarti
NATIONAL PHONOGRAPH COMPANY
New York case as well. It looks to Mr. Edison and myself as
though this may he a paid article, and if thiB journal is of that
character, then, of course, we have nothing to Bay. I have just
sent a copy of the paper to Mr. Dyer, hoping that he will get hack
in time to take the matter up with you hy telephone or otherwise
so that some reply can he prepared that will answer the case.
Eurthermore, I would ask, if you have any influence whatever
with any of the individuals connected with this institution, that
you impress upon them the necessity of at least granting us a
hearing before publishing articles of this character. It would
seem to me that a periodical published in Essex County should at
least have some consideration for an institution like ourselves,
with a pay-roll of $50,000 per week. In addition to this the
maligning of Mr. Edison personally 1b absolutely uncalled for.
not
Mr. Martin stated that he would be in his office this after¬
noon, but that Mr. Carpor would be on hand and that he would leave
word for him to Insert anything that we desired to say in answer.
Yours very truly,
tog/iot
President,
Steele*** #L**an Jiajfi imjr rtefcori; *on ?wm fa Aa<Z*A ®a4
alwo a. 3f*eei^eea 'bill foraqy .f <*» which you Ic^fidly^paiA itte
«K*!P xs>» w«ar« in. lagBlaftteh. ’
ShteWking you fawntand hoping -the* Imay
he able to a*rv« -ybu^hgaln,
81no«x»ly ya*f
John *> Holm, 'Ssws.*,
Kfudentisa *aliaing,
[ENCLOSURE]
REPORT ON-JjQteS X* ABREM:
About 64 years of agfe..
Was iieutenant on &eri*l ^Sank'1*. 5^«ff, C. Sv Atv SSJjFLng.
Civil War*
tmme'th "Washington aoSn^afterr war .
Was^Reportfr to. SoutSarn'^lHaims:' dommlfcsioir until Com¬
mission ejtp&redx
Held a^Qadtion dh^hht^/Xlffice Renting the. Cansua of
isacu
After nerving about "two (25 ^yeSrasin Cenffae Office, he
became a general shorthand k«pbrter"fttb3ag the.
^courta>en4- With commit tees'^bf' Cbnit«b»'Uht^^l^6: when he went
*9 Cincinnati, Ohio., -hh&^tBere for about thxee^ojo. four yeare
was conneetca^mth %1^ ^fi^d.,Sh^5l«>ey«ph OoJWUliy-
■^te Clnfeihhitl'iih Weuteto 3?snc fork City where he. has
been ever edhob ^hgagbd iifoShPWRJ'a^h*® work and also in the?
-amplsy^ the "Ssw^fork City- Government .
the -criminal reoorde «T thiSn-Bistriot show that no criminal
proceedings were ever instituted- against -hitr^ and the civil
record*?' ehaW that there are Bd .Judgments Standing -eg&lnot him.
Pursuant to instructions Mr. Helm and myself proceeded
to Trenton, H.J. to-day where the matter of securing a new indict¬
ment in the Andem forgery matter was presented to the Pederal Grand
Jury .
As you will doubtless recall, it was considered advisable
to seek a new indictment because the present indictment alleges that
the ground upon which the Government building stands in Trenton,
was ceded by the State to the Government, while, as a matter of
fact, it was purchased by the Government from the State. While this
slight variance is not by any means fatal, it was deemed by Mr. Dyer
and ourselves that it was' better to be on the absolutely safe side
and secure a new indictment alleging that the property was purchased
by the Government from the State instead of ceded by the State to
the Government. This was the only change sought in the indictment,
for as you know the rest of the indictment has been passed upon ty
Judge, Banning , . and he has written an opinion sustaining it in fuill
after hearing a long argument directed against it on demurrer by
counsel for Andem.
The following witnesses were examined: A clerk from the
office of the Clerk of the Circuit Court, who produced the original
bill; Joseph P. McCoy, John E. Helm and the writer.
Before any witnesses were examined, I understand that
Mr. Iindabury, the Assistant District Attorney, made a statement
intended to put the Grand Jury in possession of a knowledge of the
facts and circumstances of the casd.
Ex-Senator Johnson of Bergen County was foreman of the
Jury and there were several other lawyers, members of the body.
i am informed that after' the testimony was in some of .
the lawyers on the jury raised the following; points: • .
1. That the present indictment is sufficient inasmuch as it
; alleges the crime' was committed Mthin the jurisdiction of the U.S.
Courts, and whether that jurisdictio n was obtained through a cession
or a purchase of the property is immaterial.
T.A.E.,BSq.-2
2. That inasmuch as the sufficiency of the present indict¬
ment has been passed upon by Judge harming, a change is inadvisable*
3* That if a new indictment were found there would probably
be another demurrer filed on some grounds not raised by the former
demurrer, and the case might be, if not jeopardized, at any rate,,
delayed*
And that for these reasons it was better to let the mat¬
ter go to trial on the present indictment.
I am further advised that on a vote being taken the result
was that a new indictment was not ordered.
1 had some conversation with the Assistant District At¬
torney as to a day being set for trials. He said that the petit
jury would be in attendance on May 12th next and the Andem case had
better be tried during that or the follovring week.
hwk/Vb
[TESTIMONY BY ROBERT H. MCCARTER?]
- STATEMENT EOR GRABS JURY -
I appear as Counsel for Thomas A. Edison, with whom
I have been associated for the past ten years. Much that I
shall say is based on what I have been able to ascertain
from Mr. Edison's reoords and from the printed books, but —
events which have occurred during the past ten years are
based almost wholly on my personal knowledge. Mr. Edison
as a man, as a scientist', and as a citizen of this State,
needs no defense or support of mine. The State is proud of
him as her foremost son whose reputation is not confined to
this country alone, but is world-wide. Yet, you gentle-
' men "must have seen from time to time in the ^ public pressV ~
articles which purport to charge Mr ^Edison with many- seri--
.ous _ off enees or. crimes, in connection with .his invention and .
deve lopment of the phonograph. Wild stories have been cir¬
culated charging him with defrauding companies and individu¬
als out of millions of dollars, to which they are entitled.
If the stories were true, Mr. Edison would not be entitled
to common respects He has ^ehdured~tHe¥e-aBperBTbhs *6_n hi¥^~
character for-morethan-sixyearB and has treated- them-with — ■
silence ,. feeling, sure of ..the. confidence .and-respect. .of -his _
f ellow citizens . He has submitted to the - annoyance ,’ harrass r
ment and. expense of almost three hundred suitB brought
either against him personally or against his representatives
for whom he feels responsible; yet, up to the present time
nothing has been accomplished by "these suiti7Tior do Hr'.-
[INCOMPLETE]
i Edieon's attorneys believe that even in a technical sense ,
; can tksse suits be successful. In the attacks which Mr,
i Edison has encoiuitered, directed not only against his repu-
; tation and integrity, but against his business interests,
: he does not stand ajone. It is unfortunately true in this
i country that most successful men are the objects of similar
" attacks. Our very lax laws as to slander and libel and the
ease and economy with which suits can be brought make such
a thing possible. All the attacks and all the suits and
all the annoyance and unjust newspaper articles have been
fostered by one man - - a single individual cherishing per¬
sonal revenge and actuated I am sure by the meanest: and .
most sordid motives. This man is lame b I. Andem of Bloom¬
field. Before considering Mr. Andem's relations to these
matters, let me explain the situation which existed before
his appearance. When Mr . Edison perfected the . phonograph .
. in 1888 > be sold the invention and patents to the North
American Phonograph Company, 'a Philadelphia concern, re¬
serving to himself the right to *Jsx manufacture the machines ;
for that company. The Manufacturing Company was known as .
the Edison PhSiibgraph Works', which' still exists. . Mr. Edison ‘
-was to receive $500,000. for the -phonograph, but as a- matter .
of fact be obtained much less-,, and when the North American .
Company failed a few years' later, whatever Mr. Edison had
obtained was practically wiped out by the indebtedness due
the Phonograph Works by the North American Company. There¬
fore , in a strictly moral sense, Mr, Edison obtained practi¬
cally nothihg”for~hi'sr^honograph. The~Nortt AmefTcaFCom^ ~~
-pany-was-a-stock-jobbing-concernj-and-was'manipulated'bymen -
[INCOMPLETE]
pwr, - -
: — - who were , more ..anxious to exploit the . stock , than to. . exploit _
_ the phonograph. The rights to the phonograph for_ the sever¬
al states was found out by the No^th American Company and
more than thirty local companies were formed, most of which 1
were also merely stock jobbing concerns. Mr. Edison knew
_ _ _ _ _ expected _
nothing 'of this , and : • ^ that the business "would beprosecuted
--- in good faith, put all-of his money in the Edison-Phonograph -
L -.Works .and- hegan_to-manufacture..phonographB in- large . quanti- - . -
ties. About the year 1894. practically all of the local
companies had failed- and the North American Company went
into the hands of a receiver. Efforts were .made to keep
the enterprise afloat, but they were unsuccessful; the time ■ j
had not come when the phonograph was wanted. The local com- 1
“”panies~abandone'd~th'e~businese7 It~was~necessary-to~wind_up~ —
-■-the-af-f air s-of-the-irorth-American-Company-and-Mr. -Edison — — - j
_ was . the principal and only larged creditor. To protect. Mb
claim he bought the asse.ts of the North American Company at . 1
public auction. Any .one could have bid against him, but the
public did not want the phonograph and the local companies
had become tired of the whole thing. The assets. of the North
JAme r i'c ah~Comp any* we re~ p' r i'nbipa'lly_p bte n ts'lvhi ch"ha ve~n'o w—ex- — n-
— pired ,-but-Mr-. -Edison-has -of-ten-told-me -that-when-they-were -
iought_by„.him. he„.lp.oked_upon. them_as_ practically_worthless..__:;__;
He saw but little chance of reviving the' business , but he
-/V
lad 3 large manufacturing plant on bit hands and something !
' ' ' ■ - ;■ '
had to be done to try to w it. pay, A nev; company was or-
■ ganized in 1896 , called .the National Phonograph Company , . .
-—busine8B'-8lawly~grew-,— many-important— inventions-and-improve-—-—!
-3- ■ ;
•U- -----
[INCOMPLETE]
j . .
ments were made that changed the”phonograph'Tfom~a~scie"ntr- — ~i
fic-toy -to-a- commercial-amusement device-;' - To-keep -the-Edisoi' — J
_ .-Phonograph -Works -.going, ~much-other_business. -was -turned -over- _ _
- ®y reason of honest methods, hut laro*l.v h«na,i«A
of the genius of the man whom Mr. Edison had placed in chare e '
— —
of the phonograph business, the enterprise became slowly
successful. Those were anxious years . About 1901 , the bus-
iness began to pay and since has bee li ver y ^ofTtable No-
“"thing-harf-been-heard about7the“old-local-cbmpanies -growing- -1-—
- — out-of— the-Nor-th -American -Phonograph-Company-.— -They- all- _■
. been dead for almost ten years. They had never sold a phon- |
ograph and never asked to be allowed to sell one and ap- 1
peared only too glad to .be out of the busiiB ss . In 1899 or
1900 Mr. Andem who had been connected with the Ohio Company 1
and who saw that the phonograph business could be made !
—successful-)~conceived-:the-idea-of-re-viving“tKe-l-o-c-al-c-omp'ah~-~
:ies-by.the-br-ing-ing-of--numirou8-sutts-aga-inst-Mr-,--Ed-ison,---— —
- a±te_ndJ.ng_tp_j»arti_cipate_in_the_b.usiness.,_Andem,_theref_ore _
succeeded in making contracts with a large number of the
local companies under which he was allowed to sue in their-
, name and was to, obtain 60$ of any recovery which he might
secure. In most cases, if not all. cases, he was authorized .
-“ • to-compromlse-for -a-few -thousand-dollars; . Out" of ' those “con- . "
r-^-traots-grew~the--three— hundred-suits— to-which-I— ha ve—ref-erred- _
- — ■^-ut-mo..s_t._of__them-ha.v.e.._be.en...c.ondu.ct.e.d_.in_..the.;.new8Papersf ra- • :
ther than In the courts. Mr. Andem has been shrewed enough
'■
to avoid, up fc the present time, any crimin il responsi-
! - „
Hty , so that there was noth! g else tr do, ha to co Test
- f
. . the cases , but you will readily understand that = this: has been ■' |
-4- '
[INCOMPLETE]
._a.._v.ery-.expens i ve _thing_and_has_s o._f ar_c os.t_us_.b.e.twe an
one hundred and two hundred thousand dollars. Ab might Ids
expected, however, we now find that Andem has overstepped
the mark and in' his eagerness has comnitted a criminal act
no less than that o‘f forgery, as I believe, and f or which^,
we ask that ~he he indicted. The ' matter " aro 5e~ in~cpmieo'tX6rr~
-with- one - of.- the se -local- companies,- 'called-.-the -New -England- -
-Phonograph. Company. — In_1902,-a-.Buit-was.-hrought-inthe,-name-
-OX-jajBjfew. England Phonograph Company against Mr . Edison
the . .
and it was felt that most economical solution would be to'
buy th« New England Company stock, which eould.be obtained
on the market for from twenty-five cents to a dollar a share,
More than ten thousand shares were secured representing more
'tKah'~haif~th^”e'nt'ire-'s't"o'ck7 — — ■ - : - 1 - — —
Legal Department Records
Phonograph - Case Files
United States of America on the Relation of National Phonograph
Company v. Frederick I. Allen, Commissioner of Patents
This folder contains material pertaining to public use proceedings and
subsequent litigation brought by the National Phonograph Co. in the U.S.
Patent Office, Supreme Court of the District of Columbia, and Court of
Appeals of the District of Columbia. The proceedings were initiated in May
1899 and involved Edison's attempt to block applications by Leon F.
Douglass and Thomas H. Macdonald for patents on a larger-diameter record
with a high surface speed. The selected items consist of the following
portions of the printed record on appeal: index, petition for mandamus,
petition for public use proceedings, and affidavits of Edison and William E.
Gilmore.
/ &>* $9
TRANSCRIPT OF RECORD.
Court of AppeaIs,District of Columbia
No. 1257. /.
No. 21, SPECIAL CALENDAR.
THE UNITED STATES OF AMERICA ON THE RELATION
OF. NATIONAL PHONOGRAPH COMPANY, APPELLANT,
vs.
FREDERICK I. ALLEN, COMMISSIONER OF PATENTS.
E SUPREME COURT OF'
No. 21, SPECIAL CALENDAR.
THE UNITED STATICS OK AMERICA ON THE RELATION
OK NATIONAL PHONOGRAPH COMPANY, APPELLANT,
FREDERICK I. ALLEN, COMMISSIONER OP PATENTS.
APPEAL FROM THE SUPREME COURT OF THE DISTRICT OF COLUMBIA.
Petition for mandamus .
Exhibit A — Petition requesting the institution of public-use pro¬
ceedings . .
Afliduvit of William E. Gilinoro . : .
Thomas A. Edison .
Walter H. Miller .
Charles Wurth . .
John F. Ott .
Exhibit B— Letter of Dyer, Edmonds & I)yor to Commissioner
of Patents .
Affidavit of Thomas A. Edison .
Exhibit C — Lotter from J. T. Newton to Commissioner of Pat-
D— Letter from 0. H. Duoll to Dyor, Edmonds J: Dyer.
. Lettor from 0. H. Duoll to L. F. Douglass .
E— Letter of 0. II. Duoll, dated Juno 27, 1899 .
F— Letter from C. H. Dnell to National Phonograph Co.
G-Ordorof 0. H. Duoll, dated July 18, 1899 .
Lotter from Dyer, Edmonds & Dyer to Commis¬
sioner of Patents. . . . .
Kxhibit ll—Oalar of C. II. Duoll, dabal February 1 1, 1001 . '
J— Order ofF. I. Allen Commissioner I V I T .
24. 1002 . ’ ’ ‘ “"Unry
A indavit of Iiielmrd N. Over . V
Affidavit of Leonard u. Dyer....... .
lixlnbit b-Onlorof F. I. Alloa, Commtoioaor.'dalo.lFobraa'ry'
RoUirn to rulo to sli'owcauso." .... .
Exhibit A-O,.inioa of o'. H. tail', Cbrnnitato,'^,'
"-Lottor froa, E. A. Ill, c|, cook to Commissioner' ^
or ;i
Exceptions to Amended return. . .
Replication . . .
Pleadings withdrawn ami donVurrorViiod.‘ . .
and penalty of a^o,™ ' iundn'xeT'' POtiUO'‘ diSn‘iaeod- "r1!^
Memorandum : Appeal bond tiled. . .
for -«.;Bcri|.t: ; : ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; }
In the Court of Appeals of the District of Columbia.
The United States of America on tho Eolation
of National Phonograph Company, Appollant, l No 12f.„
Frederick I. Allen. Commisstonor of Patonts. J
Supromo Court of tho District of Columbia.
The United States of America on tho'
Relation of National Phonograph Com¬
pany, Rolator,
No. 45225. At Law.
A,H
Bo it romombered, that in tho supromo court of tho District of
Columbia, at tho city of Washington, in said District, nt tho times
hereinafter mentioned, tho following papors woro filed and proceed- •
ings had, in tho above-entitled cause, to wit :
1 Petition for Mandamus.
'Filed February 1, 1002.
In tho Supremo Court of tho District of Columbia.
The United States op America on tho'
Relation of National Phonograph Com¬
pany, Relator, ' ; : l At Law. No. 45225.
Tho above-named rolator, National Phonograph Company, re¬
spectfully represents
1. .Your rolator is a corporation duly organized and oxisting utidor
tho laws of .tho.Stato of New Jersey, having its principal place of
business at the city of Orange, in the county of Essex, in said State ;
that. the respondent, Frederick I. Allon, is the Commissioner of
Patents, duly qualified and acting as such, and that the said re-
: spondont was such Commissioner and acting ns such on January 24 ’
' : 1— 1257a '■■■■■: . ’ .
2 ®H* 0. 8. OF AMERICA ON RICr.ATION OF NAT. MDHOraura
^sUirsuch Com missioner.0 Youi.Tou'torll'f01' COmplain,ed of, and
of riiomns A. Edison relating to Dhono™!f° om]er°l ‘ho patents
decessorsin interest imve since 18S0 h»g™1S,a"^lt and 1,3 pro¬
of soiling plmnogrnnl!s „ndX1onrL^,m^eng°d.11 f'10 busi“^
ufactunng licousoe* undor said pat“nXt?,n m'1-0 ty them“n-
works, and it still is so engaged P ' Ed,s0,‘ phonograph
volition consistedTn'opi
'™s nt tlint time customaril'v^mnlmro^’i™^1 a‘ a b,£her speed than
The said Douglass .Xin/oLXX rettorm M ‘h° Pho >1 ■
^sosi'sRS^iF5?18^
sJtos^ar^f • :
the soiling of phonographs known bv,IiT° tlme 011«n«ofl "i
concert phonograph ’? manufactured^ X ‘rado na,„0 of “Edison
licensee, the Edison phonograph works nnd^ *.*? ™anufncturing
to operate nt this higher snood Yn„? ? d, Pflrilc,u!«t'1y designed
facturing licensee had invested a “toJ at?d.lts said manu-
business, believing and be"ngadvfaed KT ?f,moW !n tho aaW
faeturo and sell such phonolranhs W lasal riSht to mnnu-
they were fully protectod in8dok® so hv^ i?, .^tion.nnd that
your, rolutor owned. Your relator was ,?Jlson, Patents wliioh
vaIj‘1, Patent could be secured bveitl n? th l l°-ri "A)v,sod ‘bat no
said Macdonald or by any other lf!^ th 3a,ld Douglass or tho
volition, because th/ standard n?immSm°T 4 10 ,sai,d al|ogcd in-
manufactured by the said inanufaZSP ‘-S ,vl,,oh llad been
your relator and its prodocessors hM, "6 b“nsea and sold by
had boon adapted by adjuXnt sl,lco 11,0 year 1880
epornte at the higlf spied "wh oh “'°,r fPeed-rogdlntore to
: :tl>te said alleged SaXton QnrL,?'Ted to eonsti-
raonljr aiid publicly operated at tho said ,1 !ad be?" m fact coiri-
the said Edison made and publicly used fn kh ’ Spoed,’ a,so bocnuso
a machine known ns the “ fbur.Undld 1,0 W 1895 and later
hnd been designed to operate nnd ,,l'J ^^lr()1flcl mnchine, which
which Vad b”en*iminufacturo({Sby tlio'AjnorieM^^^^^P^^^
pany for many years liad boon adnptod by. adjustment of their spootl-
regulators to operate nt said high spood and lmd been so publicly
X rated by users thoroof more than two years before tho filing of
Douglass and Macdonald applications.
In viow of those and other facts known to your relator, your re¬
lator was advisod that any patent grantod upon said allogod inven¬
tion would not only bo invalid bocnuso lacking in novelty, but also
bocnuso of the statutory bar against tho granting of a patent upon
any invention which lias been in public use or on sale more than
two years prior to the filing of the application for tho patent.
3. Your relator further states that notwithstanding it was advisod
that it could dofeat any suit brought against it or its customers on
any patent which might bo granted either to said Douglass or said
Macdonald on said alleged invention, yot your rolutor well
4 knew tlint the litigation of suits brought on such a patent
would put your relator to largo oxpeiiso, and that the owners
of sucli a patent could by advertising aud otherwise intimidating
users of your relator’s phonographs, prospective purchasers of your
relator’s phonographs and the trade generally, greatly injure your
relator’s business and largely destroy tho valuo of tho investment of
your relator and its -manufacturing licensee in said business; and
particularly that the possession of such a patent by your relator’s
competitor in business, the American Graphophouo Compnny would
soriously monaco the business and investment of your relator and
ite manufacturing licensoo.
Your rotator was advisod that the true, original and first inventor
of said alleged invention was your relator’s assignor, the said Thomas
A. Edison, and that fo prevent the grant of a patent upon the same
to said Douglass or said Macdonald, it was necessary that your relator
should either file an application for patent on said allogod invention
in tho name of said Edison nnd contest the question of priority of
invention with said Douglass and Macdonnld by an interference in
tho Patent Office; or that your relator should petition tho Commis¬
sioner of Putonts to institute public-use proceedings against the
applications of said. Douglass and Mucdonald for the purpose of
establishing tho existence of the statutory bar of two your?’ public
use against such applications. Your relator was advisod, however,
that the said Edison could not truthfully make tho oath required on
. \ ; the filing of an application for patent on said alleged invon-
5 ' tioiij because he could not truthfully swear that said-alleged
invention had not boon in public usooron salo more than
two yoars prior.to such application, such use having boon made by
your relator and said Edison, and being well known to him. •
. .-. Your relator, although, by reason, of its ownership, of. tho inven¬
tions of said Edison relating to phonographs, entitled to a, patent for
its own benefit upon said alleged invontion if . such a patent could
bo lawfully granted at all, yet, because of the oxistenoe of said stat- ;
utory bar, your relator was prevented ndt'only from scouring such
patent for its own benefit, but also' from' filing an application for
such patent', and by tneaus of an interference preventing either the
I. S. OF AMKllIOA ON RELATION
V,n,.?Tf aSS 0I' tl°-sa!d Miedoimld from securing such patent
I 1 thftt tho only lawful course open toil, to
Fo sZ Drniw fi!'ant,0,f 11 Pntont 011 said alleged invention
a «, “ r S3,S; sassstf “£ *HSSS It
question ns to whother or not the grunting of a pntont upon a^nend
Ftl^STc^IoluXs^u dtfl1' 7li0,n 4m of Ul° Revised PStat-
G S(Ir0HS^
Soeratmx of tho Interior on appeal, April 17,Pi883 (23P ClG., 2233°
by tho Pnt’o t Office ;|h° Praotl“ tbusestnblishod lias been followed
■ 1887, p. 90 subsequent cases. See Ex parte Knoll, G. D.
™0Fac‘ie? t,ms established provided for a contested inter vartca
pntentfa'S shoX^afe <* “
-■Bft&SsiSsSgS
lass and Mncdonald ff^ o? the said Doug-
yeur 1877 bpino* .««,.« , eou 1,1 Put>bc uao in this country smco the
charge of tho class of phonographs, and on May ll;1899,as tho rosult
of an informal hearing before tho primary oxaminor, your relator
mod an additional affidavit of Thomas A'. Edison, elaborating tho
facts os to 0110 of the items of proof; a copy of which affidavit and
tho accompanying letter transmitting tho same to tho Patent Office is
appended hereto and marked “ Exhibit B.”
(i. On Juno 7, 1899, the primary examiner made a roport on said
potitiou i to tho said Charles II. Duell, Commissioner of Patonts,
(copy attached, marked Exhibit "0”) finding tliata prima facie caso
ol public uso had boon made ’out, and “ recomraomling that public-
uso proceedings bo instituted to dotormino whothor aiTy dovico cov¬
ered by Douglass claim one has boon in public uso more than two
yonrs prior to Douglass’ application.” No roforonco was mado in
tins roport to tho Mucdniinld application, although that application
was referred to lu said potitiou ; but it appears by tho docisiou of
tho suid Charles H. Duoll, dated Juno 30,1899, about to be roforrod
to, that at tho timo tho primary examiner made this report ■
a ho culled tho Commissioner’s attention to tho fact that nn-
• , eV'er application, filed by Tliomas H. Macdonald, disclosod
substantially tho some invention as tlmt claimed by Douglass, and
that ono of Macdonald’s claims hud been suggostod to Douglass, who
had incorporated it in his caso, and ho recommondod that if public-
XufinXiotiSc^” institu,e<1 by the Commissioner, Macdonald
n 7. Ou Juno 10,1899, tho said Charles H. Duoll, Commissioner of '
1 utcuts, issuod an order diroctud to said Douglass, requesting him
to show cnuso.wliy public-uso proceedings should not bo-inslTtutod
against Ills application, tho hearing on Suid order being fixod for
Juno 22, 1899. A copy of said order was transmitted bv lottor to
your relator. A copy of suid order and lettor is apponded, mid
marked Exhibit D.” • At tho houring on said ordor, counsel were
hoard on behalf of said Douglass, on behalf of tho Amoricnu Graph-,
ophono Cpmpauy, tho ownor of tho invention of the said Macdonald,
Ta° nl fi?f ,y0.U,r ,r°!!lt01'’ 0,1 JmlB s°. 1890, the said
wiurfes if. Duoll decided that while your relator had made out u
prtma /acte case for the institution of such public-use proceedings,
yot on account of the ponding intorreronco between tho said appli-
cutions of Douglass and Macdonald, “ such public-uso proceedings
should uot bo instituted until tlio said interference should bo de¬
clared, so that the parties- can iiispoot encli othor's applications, and
tho extent of the proceeding may bo more intelligently dotorminod ; ”
as appearaliy aco^y of tho said docisiou attached lioreto and marked
9 . , 8. On July 18, 1899, the , said interference between Doug-
' i , , Jass und Macdonald Imving proceeded to tho stugo contoin- ■
plated by^tlio said Commissioner in his decision or Juno 30; 1899,
tlio said Commissioner instituted public-uso proceedings against tlio
Douglass application on your relator’s petition, and sot times for tho ■'
taking of testimony, A copy, of this decision ivus forwarded to
your relator with a letter requesting your relator to furnish the
6 THIS a. S. OK A MIC KID A ON JtKLATlON OF NAT. PHONOOttAPll
onposing partira and the Patent Ollico with the names and addresses
mnrWi Messes'a,ldit.10 1 lao1° 1wllore the examination would bo
nr^Al b-T y°Ur ?’G,ator> a,ld ala° requesting vour relator to send
fifty dollara to Pay tlio expenses of tho officer dotiiiled to represent
the Patent Office in conducting tho proceedings. A copy of said
decision of the said Commissioner, dated July 18, 1899, and tho
letter roforrod to, is appended horelo, innrkod "Exhibit S’”
9. Your relator compliod with the terms of the last-mentioned
decision and letter of the said Commissioner, but before the talcing
wo^susnn°enydod ' bvT' -Yn™ Pr?c?odinSa said public-uso cas!
? d by tofald Commissioner to await the decision in
the intoiforonco caso botweon Douglass and Macdonald,
n ld' °“ Jonuary 30, 1901, your relator having been informed that
the interference between Douglass aud Macdonald had boon finiilfy
nso nrnnin v“VOr^ Maodonnld' llnd being ad vised that the public^
seated onto A gS d!rooted “Ka1,nst tbo application of Douglas pro-
• seated only a moot question, because of the decision adveSe to Lid
10 Charies H SlVn ™"“’ your relator moved tho said
Charles II. Duel!, Commissioner of Patents, to reform said
public-uso proceedings by including the said Macdonald an-
tl Cm,A<|nnh0Hln’ “nd /urt>101' ‘hat your relator should bo allowed
a ^ t0 oxn,nl"? tho aaid Macdonald application
e nffiee il -renCi? P'oocedings, and be furnished by the Pa“
eat Office with copies of such portions thereof as it might desire a
hem.!,' 3fS|lud.mot|on being annexed and marked “ Exhibit G ” A
terostod 'i™"8 be011 l,?d1uPon a‘dd '"otion, at which all parHos in-
tLicstod weio lepresonted by counsol, tho said Charles IT DhaII
ofPatenteof February^lfoi ■«“ CmninMo^
OO. VS. PREDICiUCIC I. Al.t.EN, COMm’r OP PATENTS. 7
I.” At the same limo, counsol for the said Macdonald movod tho
said Commissioner of Patents to sot aside said public-use proceed¬
ings nnd issuo tho patent upon tho Macdonald application. After a
hearing upon both tho said motions, tho said Commissioner of
Patents, on January 24, 1902, rondorod a decision donying Mac¬
donald’s motion to issuo his patent, also donying your relator's
“ Exhibit J.”
13. Your relator furthor shows that by said decision of January
24, 1902, tho said Commissioner of Patents lias refused to follow tho
practice established under the statute with the approval of tho
Secretary of the Interior in tho Altoneck caso, and has decided that
the public-uso proceeding against the Macdonald application based
upon your relator’s potition shall not bo conducted ns a contested
case or under the rules in interference cases, but shall bo conducted
as an investigation m which your relator has no standing as a party,
but is permitted only to furnish witnesses to tho facts allegod in
your relator’s petition ; and it further appears from said do-
12 cision that this anomalous proceeding proposed by the said
Commissioner of Patents is one pending in his personal
office, which is not organized ns a trial courts as is tho office of tho
examiner of interferences, but under tho rules of practice is a court
having appellate jurisdiction only. And it furthor nppears that
your relator, even after said testimony is furnishod, may not bo
permitted to bo represented by counsol upon tho hearing upon said
testimony, and will not be permitted to examine tho said Macdonald
application or show tho pertinency of said testimony upon the issue
raised by the said proceeding, namoly, whether or not tho invention
doscribcd in the said Macdonald application was in public use more
than two years before the filing of said application, and will not
have any of tlie othor rights of a party to a contested proceeding in
the Patent Office.
missioner ordered “ That tho taking of testimony in _ _ _ ....
allegation of public use begin on Monday, February 3rd, 1902, or if
tho witnesses cannot bo produced at that time' upon some day dur¬
ing tho .week then commencing, to bo fixed by the protestant, and
that it shall bo completed with the utmost diligence.- Tho National
Phonograph Company will at onco notify this office and Macdonald
of the names of tho witnesses and tho placo whore they will bo pro¬
duced for examination during tho week stated. Upon its failure to
do'so, it will bo assumed that it is no longer willing to assist this
offico m tho investigation, aud the action upon Macdonuld's appli¬
cation will bo governed accordingly. John M. Coit, law
13 clerk, is dotuilod to represent tho office and conduct tho pro¬
ceedings.”
Your relator furthor avers, upon information nnd belief, that this
8 DttB tt. S. or1 AJtICRIOA ON RELATION ON NAT. PltONOdRAPH'
ordorwnssentby the said Commissionorto Leonard H. Dyer, Esquiro
‘ “K1®10" representative of counsol for the National Pliono-
mn,1>mid was not recoived by him until the
-7tfi day of January, 1902, which was Monday. Thereupon the
p“1„fJre°1!;ud IP' Dyor at once communicated with Richard fi. Dyor,
Esquiro, the patent counsel of the National Phonograph Company
in the city of Now York, and who had charge of saiS publiS
Ke,dl'Tnf0t t-'° Natlonal Phonograph Company. ^Tho said
Richard N Dyer, m consequence of illness, was unable to take iin-
Erida^thnai1 rf reSrPT0t t0 tlle nlatter of ‘ho said ordor; but mi
H iZ’r otffiSl Mly °-,iJ?",,la7r' at his instanco; the said Leonard
nriiT/'ii1?..10 sald, J°lm M- Coit, referred to in the said ordor
Riihnrrl TSeSn°ft ’a St}1,d K’1<?hnrd N- Dyer, and that ho, the Mid
Jticl mid N. Dyer would call at the office of the said Commistfonor
on tlio following Monday, February 3rd, when ho would inform the
said Commissioner as to what action lie propose™ to take^ tl,„
promises. Oil Monday, the 3rd of February, Pthe said Richard N
Dyer accordingly culled at the office of the'said Oimmi^ioner of
?at™^'al,ld "'formed him that ho had consulted local counsol with
icspect to the rightful status of the National Phonograph Company
" tEf1,"8 P"bl o-use proceeding, and that tlm sa l compZ
our of r tll0i •pUfrpose °f aPP'yi»S to the supK
1dm 1 n 1 ?f 9olumh‘a for a writ of mandamus to compol
Jam, the smd Commissioner, to recognize the right of tho said com-
writ wL'in01"101 thr° alud Col."ln'ssioner that a petition for the said?
flunll y^^^lod1*^ — iT ",I‘icl1. ho woufd like toaco
Orange, Now Jersey on TueXv &iP rP£ ?d and . was taken to
15 15. Aud the relator further shows to tho court, upon infor¬
mation and belief, that nothing further was hoard either from ■
the said Commissioner or from tho snid Coit until Thursday, the Gth
day' of February instant, when tho said Leonard H. Dyer recoived
through the mail from the said Commissioner of Patents what pur¬
ported to ho a copy of an order issued by tho snid Commissioner,
and which, after reciting the language of tho aforesaid ordor of Jan¬
uary 24th, 1902, to tho following effect:
“The National Phonograph Company will at once notify this offico
and Macdonald of tho names of tho witnesses and tho place whore
they will bo produced for examination during tho wook stated.
Upon its failure to do so, it will ho assumed that it is no longer will¬
ing to assist this offico in tho investigation, and tho action upon
Macdonnld’s application will ho governed accordingly,” proceeded
ns follows:
“The National Phonograph Company has not complied with this
ordor; and since it is apparently not willing to produce tho wit¬
nesses to tho ulloged public uso for examination, a continuation of
tho investigation is iin^racticul. Tho ordor constituting tho public-
use proceeding is set aside, and Macdonald’s application is remanded
to tho primary examiner for consideration and action.
F. I. ALLEN,
Commissioner.
February 6, 1902.”
All of which will moro fully appear from tho copy of tho said
order markoci Exhibit L which is herewith filed, anil prayed to ho
read as part hereof.
10. While your relator does not intend to cliargo tho said Com¬
missioner with any fraudulent intent or wrongful purposo in
10 issuing tho said ordor last hereinbefore roforred to, novertho-
less ho docs aver that tho issuance of tho said ordor under
tho circumstances horoinheforo set forth, mid especially in view of
the words uttorod by tho said Commissioner in reply to tho state¬
ment that mandamus proceedings were contemplated, and that the
papers concerning tho same wore in preparation for filing, constitute
a fraud in law upon tho rights of your 'relator, and an attempt to
deprive your rolutor of legal rights which had been constituted bv
the declaration of the tiforesnid public-use proceedings, anil of which
he' cannot bo divested by the aforesaid -ex parlc, arbitrary and illegal
order of the said Commissioner. - .•■■■'
17. Your relator further charges that ho bus no relief in the prom¬
ises save by a writ of mandamus, and that ns ho is advised by counsel
an appeal or a writ of. error will not lie from tho notion of tho said
Commissioner, respondent, to any superior tribunal. Further, your
relator shows tliiit tho action of the said respondent in the promises
is a matter of public.concoru, and one occurring in the administra¬
tion of justice. Your relator therefore prays that this honorable
court will, by its writ of mandamus, command' the said respondent
10 THE V. S. 01'' AMERICA ON RELATION OP NAT. PHONOGRAPH
8. FREDERICK I. ALLEN, COMM’n OF PATENTS. 11
to forthwith reinstate the aforesaid public-1130 proceeding, and hav¬
ing so done to grant to your relator tho rights of a party in interest
m smtl pnbhe-uso proceeding, and to conduct snid proceeding ns a
contested case under the pructico prevailing in tho aforesaid
17 office, 111 accordance with tho decision in the Alteneck case
hereinbefore referred to.
NATIONAL PHONOGRAPH CO,, :
naiioNAL 1 HUiNUGltAPH 00,.
By WILLIAM B. GILMORE, [seal.]
, President.
LEONARD I-I. DYER, President.
RIOII’D N. DYER,
R. ROSS PERRY and SON,
Attorneys for Relator.
District of Columbia, ss .-
I, William E. Gilmore, do solemnly swear that I hin the same
poison who has signed the foregoing petition as president of The
National Phonograph Company, tho relator thoroin, and that 1 11111
the in1iS°SKrut "IU ,luV0.,‘utll0rlty from the said corporation to sign
the said petition and verify the, same; further, that I have read tho
thorehi setmedn?‘!i!IU<1 kTV t1}0 contonta thereof; Unit tho mnllora
23dSSS tCnmS PlSgrapV^ nVth0
WILLIAM E. GILMORE.
A.Db1002ed “nd S"'°ni t0 before U,B U>is 7th day of February,
J. R. YOUNG, Clerk,
By L. P. WILLIAMS, A, it Cl'k.
■1® Exhibit A.
Filed February 7, 1002.
- In the Unitod States Patent Office.
InpSnranfi'1lt?Prli0,ltiQii °f tho National Phonograph Com-
use ^rocM^ings’.^On Poti'tiom0qNa i*l,blic*
To tho honorablo Commissioner of Patents:
resents- P°titionor' Nntiollnl Phonograph Company, respectfully rep-
havo since 1880 been engaged iii tho businoss of selling phonographs
and phonograph supplies made by tho manufacturing licensee under
said pntonts, the Edison phonograph works.
3. Your petitioner is at tho present time engaged in the sale of
concert phonographs mado by its licensee the Edison phonograph
works, and wherein is used a soap blank having a diameter of five
inches, a length of 4.25 inches and operated at a normal shaft speed
of from one hundred to one hundred and twenty turns per minute,
thus giving the surfaco speed to the blank ranging from 1570.8
19 to 1884.96 inches per minuto.
4. Your petitioner is informed and believes that certain of
its competitors or their assignors are seeking to secure a patent on a
Iilionograph employing a waxliko record blank of an abnormally
argo dininoter operated at or about the usual shaft speed of from
100 to 120 turns per minute, whereby a greater surfaco speed will
be secured than is usually employed in the operation of the Stand¬
ard phonographs at a corresponding shaft speed, the increased sur¬
face speed so obtained necessarily resulting in louder and clearer
reproduction.
6. Your petitioner respectfully represents that tho grant of a pat¬
ent on a phonograph, employing a large blank operated at a-proxi-
matoly the usual shaft spood, would result in tho subjection of your
petitioner to tho possibility of a suit for infringement, thereby put¬
ting your petitioner to great annoyance and expense, and to possible-
irreparable injury.
G. Your petitioner respectfully represents that from tho affidavits
of Thomas A. Edison, William E. Gilmore, Walter II. Miller, Charles
Wurth and John F. Ott filed herewith and made a part hereof, it
appours to have been well recognized in the phonographic art that
tho advantages resulting from the use of high surface spood of pho¬
nograph blanks were recognized as early ns 1877, and that phono¬
graph blanks have boon made of varying diameters and have been
operated at varying shaft speeds with tho point in view of securing
superior reproduction both in loudness and clearness.
20 7. Your petitioner respectfully represents that in view of
tho public knowledge indicated by these affidavits, a patent
on a phonograph having a large waxliko blank operated at or
about tlni usual shaft speed should not be granted by the Putont
Office, ns it clearly covers Only tho recognized knowledge of a skilled
person and does not cover a patentable invention.
8. Your petitioner furthermore represents that from the affidavits
in question, it appears that phonographs. using record blanks rang¬
ing from six aiid one-half to seven inches and operutod at shaft
spoods of about one hundred and twenty-five rotations per minute
wero made and sold in tins country, and were iri public use in this
country at as early a date as 1877, aud that phonographs having wax-
like record blanks capable of being operated at a high surfaco speed
have been made aiid sold in this country und havo boon in public
use iu this country for more than ten years. -Said affidavits also
show. that as early - as 189G,- a phonograph using wax-like record
12 THE U. S. OF AMERICA ON RELATION OF NAT. PHONOGRAPH
CO. VS. FREDERICK
PATENTS. 13
sn!!nrlC3rmvin^adiam10tel'i0f sovou inchos and operated at a shaft
speed of one hundred and twenty-five rotations per minute was
number'of^raons.^ C0Untrlr nn^ was witnessed by a large
Wherefore, your petitioner pravs:
1. That proceedings may bo instituted by the Patent Offico but
at the oxponso of your petitioner, to determine the truth of tho facts
above presented, and of the facts alleged in the affidavits in ques-
2i
but that it covers apparatus which has boon long in pubUc use ’
intddn'LnT lt.V °f a proceeding to investigate tho state of the art,
in addition to determining the question of public uso is considered
a reason for tho refusal of such an inquiry L above ~ted then
your peutmner requests that the office may institute plltuso pro-
C7*“i,p4%k””“f: " 10 •*-»
•j^^avs^w^ss
given to such opposing parties.
Respectfully, 1>0t*t'0n01' W*^ evei’pr°y> *0,
„ NATIONAL PHONOGRAPH COMPANY
By WALTER S. MALLORY, President.
State of New Jersey, 1
County of Essex, f88-
and™ * fJtTs p?2nt°of ZW0’ ,°'l?ath dotI‘ d°P°so
ffisftrSsiMwfe
WALTER S. MALLORY.
Subscribed and sworn to bororo mo this 14th day of April, 1899.
J. P. RANDOLPH,
[seal.] Notary Public for New Jersey.
23 Affidavit of William E. Gilmore.
In tho United States Patent Office.
In tho Matter of the Application of Tho National Phonograph Com¬
pany- of Orange, Now Jorsey, Requesting tho Institution of Public-
uso Proceedings. On Petition.
State op New Jersey, 1
County of Essex, )88-
William E. Gilmore, being first duly sworn, on oath doth depose
and say as follows ;
I am the general manager of tho National Phonograph Company,
the above-named petitioner, which company is the owner of the
patents of Thomas A. Edison relating to phonographs, and is en¬
gaged in the sale of phonographs inado by its licensee tho Edison
Phonograph Works, and in tho commercial exploitation of the
phonograph. On March 10, 1899, Loon P. Douglass of Chicago,
Illinois, called at my office at Orange, Now Jersey, and informed
mo that ho had filed an application for a patent on a phonograph
having’ a wax-liko record blank of abnormally large diameter,
operated at tho usual shaft speed of from 100 to 120 turns per
minute; . that on such machine a claim had boon allowed by the
Putont Office ; but that tho said application had become involved
in an interference controversy with an application for the
snmo dovico, filed by Thomas H. Macdonald, and assigned to
tho Auioricnn' Graphophone Company. This information was
communicated to me by Mr. Douglass freely, without reservation
and without any conditions whatovor. In this interview,
24 Mr. Douglass showed mo. a paper which he stated was a copy
of the specification and claims forming a part of his said ap¬
plication ; and particularly identified tho cluim which he informed
me had been allowed by the Patent Offico. I thereupon requested
Mr. Douglass to permit mo to copy tho said allowed claim, which
request was granted absolutely and without condition. In the pres¬
ence of Mr. Douglass and in conformity with his offer, I then made
a shorthand copy of said allowed claim and immediately transcribed
my shorthand uotes. The said claim which Mr. Douglass informed
me was allowed by tho Patent Offico, is ns follows :
■ " The combination with a large sonnd-rocofrl blank- or cylinder of
a wax-liko composition; of, say, substantially six inches in diameter,
of n talking instrument and a motor for rotating tho largo sound-
record cylinder or blank at the usual. or customary speed of 100 or
120 revolutions per minute, whereby tho volumo, clearness, distinct¬
ness and naturalness of the speech, vocal music, instrumental music
. sTaSySrSfoS ■■ d °r r°t,r0t,,,C0d a,'° neatly increased, sub-
AVILLIAM E. GILMORE.
Sworn to before mo Ibis 14lh day of April, 1890.
J. F. RANDOLPH,
Notary Public for New Jersey.
25 Affidavit of Thomas A. Edison.
In tlio United States Patent Offico.
IUCbmJ?» nr rfrnn10 £|,|,li?ntio" ?/ U>° National Phonograph
Statu op New Jehsev, l
County of Essex, [ss:
r.Saii®1* b'l,,S dul)' 0«h <l«0. ,!*«, „d
Pbrajn was Si'V ‘""’'i'0 ,lt H1® 0f1*0r°nd for rotating it. T'S
cut i„ llle peripl,^1 Wo
‘^SsflSptSS
or upon the recording surface of Zavea
oo. vs. PiutiiEutcK i. At.r.EM, oomm’is op PatEUts. IS
ing to tlio original vibrations, I found ns early ns 1877, from experi¬
ment and microscopical examinations, that these waves or depres¬
sions would bo formed more perfectly and that the reproduction
would be better nnd louder, if they wore allowed to extend over a
relatively great length of surface. Consequently, I made my origi¬
nal phonograph with a largo blank nnd a high surface speed, be¬
cause I wanted to secure an instrument capable of loud reproduc¬
tion and suited for exhibition purposes.
About the year 1887, tlio original graphophones wore put on the
market. In these machines, paper blanks having a waxliko coat¬
ing -were used, the blanks being 1.25 inches in diameter and 0
inches long, with a pitch of 160 threads per inch and a usual
27 shaft speed of about 200 turns per minute. At this shaft
speed, the surface speed of these blanks was 785.4 inches per
minute, somowhnt lower than that used in the present Standard
phonographs, while the length of the record groove was 3,769.92
inches. Owing to tlio low surface speed, to the objectionable char¬
acter of the recording surfaco, and to the crudeness of the recording
and reproducing devices, the reproductions secured with the old
graphophones were very faint nnd obscure.
Prior to 1887, 1 continued tlio experiments which. had been con¬
ducted by mo at the tiino of the invention of the original phono¬
graph in the use of recording surfaces of a waxliko material, and
ns a result of theso experiments I invented the present recording
cylinders, composed of an umorphous, coherent, hard, brittle, noil-
viscid material, such as a metallic soap. Theso experiments re¬
sulted, ulso, in the production of the raodorn commercial phono¬
graph, with its dotniled improvements relating to the recording and
reproducing devices, its general make-up, motor, governor &c. By
ronson of theso improvements, in the character of the record sur¬
faces and in the construction of the recording and reproducing de¬
vices, and furthermore, by using separate und distinct recording and
reproducing devices, oacli fitted particularly for its special work, tiro
loudness and clearness of the records nnd the durability of such
records woro very greatly ad vhneod.
In 1887, 1 adopted the present standard-size phonograph blank,:
of an external diameter of 2.1875 inches, a length of 4.25 inches,
and with a pitch of 100 per inch. My reasons for adopting a
standard blank of;tbis size were that it presented in a minimum
bulk a sufficient area for the making of a phonograph record
28 of average length, without necessitating too fine a pitch as
to be liable to become injured in the exigencies of use by
more or less unskilled poisons. A blank of this size enabled me to
make my phonographs of a neat and substantial construction, while1
the blanks were of sufficient mass as to be strong enough to with¬
stand the ordinary usage. I designed the Standurd phonographs
particularly for offico work in the dictation of correspondence, and
haviug adopted, for tlio more or less arbitrary reasons stated, a
. blank of the size indicated. I found that by turning it at a speed of
about 100 rotations per minute I was enabled to secure records of
fATfiliTS.
16 THE tf. S. 01? AMKltlOA ON IlEtATiON OP NAT. PJlOtiOOIUl’It
lotlors of nn nvorngo length, which records could be reproduced
clenrly und sntisfuotorily by the employment of listening tubes.
When usod with listening tubes, the records secured oil tho standard
blanks operated at a shall speed of about 120 turns per minute, were,
and are still, sufficiently loud for tho purposes for. which these
machines wero particularly designed.
Tho perfected Standard phonographs wero first brought out about-,
tho year 1889, and wero provided with electric motors having cen¬
trifugal governing devices, by which tho surface speed of tho blank
could bo varied within wide limits, or, in othor words, from about
50 to 300 rotations per minute. The standard-sized phonograph
blanks adopted by mo in 1887, with a pitch of 100 throads per inch
and a usual shaft speed of about 120 turns per miuute, have boon
adopted by my competitors in the phonograph business and now
constitute ’the usual standard in this nrt.
In September, 1888, 1 commenced the manufacture of doll phono¬
graphs having soap record blanks 3 inches in diameter, ndapted to
be operated at a shaft speed of about 120 turns. : These phono-
29 graphs were made und sold iul888 and subsequently theroto.
Tlie increase in tho diameter of the phonographs from 2.1870
inches to 3 inches resulted in an increase in tiio surface speed of
from 824.G7 to 1130.976 inches per minute. These doll phonographs
wore capable of reproducing, and did reproduce, loudly, but owing
to the fact that tho reproducing device used with them was cheap
and simplo, tho reproduction wns not as clear lis it would have been
if the present floating-weight reproducer bad been usod.
In 1890, 1 constructed a large number of phonographs of the type
described in my patont No. 610,706, dated September 13, 1898, wliicli
instruments wore shipped to Great Britain. With these mnehines, a
standard soap blank was ordinarily used, but tho machino was
adapted to receive a small mailing blank only .76 inches in diam¬
eter, with a length of 3.875 inchos. For the making of commercial
records adapted to bo transcribed on tho typewriter, tho standard
blank was used, the reproductions through the listening tubes being
loud enough and cloar enough for this purpose, while- for mailing
purposes the records wore producod on the small blanks for trans¬
mission through the mails and the reproduction was sufficiently loud
and clear through the listening tubes as to suit the purposes of
private, confidential correspondence. With these machines, the re¬
production was always superior, both in loudness and quality, with
the standard blanks than with tho mailing blanks, the shaft speed
in each instance being assumed to bo the same, since the surface
rd of the former (824.67 inches) was almost three times that of
latter (282.744 inches).
In 1895, 1 constructed at my laboratory At Orange, N. J., a rna-
; chine of a new : type, which I call my “400-thread machine,”
30 and which has been viewed and examined by a large number
of persons. In this machino, a phonograln- 2.76 inches in
diameter and 6.60 inches in length is employed.! By a change in
the gearing, the pitch of the record grooves has been varied . to from
Ct>. VS. fchEDEhldK t. AlMtfc,' comm'k oj?
200 to 320 and to 400 threads per inch ; the shaft speed has varied
from 160 to 250 turns per minute, but has almost always, in my ex¬
periments, boon ' confined to about 200 turns per minute, giving a
surface speed of tho record surface of 1727.88 inches por minuto, or
more than double thnt of the standard blnnk at 120 revolutions por
miuute. By reason of tho increased surface speed, the reproduc¬
tions have been of a very superior order, both in loudness and
quality, while by reason of tho fineness in pitch, the phonograms are
adapted for the roceptiou of records of unusual lengths. The 400-
thread machine is at present in use in ray laboratory, records are
frequently made thereon and visitors are allowed tho opportunity
of hearing its reproductions.
In March, 1896, in order that tho capacity of my old tinfoil phono¬
graph for use with soap blanks might bo determined, I made a num¬
ber of sonp blanks, having an oxtorual diameter of 7 inches and a
length of two inches, which wore placed on the old tinfoil machines
mid records secured thoreon, tho pitch being, ns originally, 25
threads por inch nnd tho speed being 125 turns por minute. With
a blank of this dimnotor and at tho shuft speed indicated, a surface
speed of 2748.9 inchos per minuto was secured, a liighor speed than
any used at the present time. With the tinfoil machine having a
soap blank, the chisel point served to cut or gouge out a record, in
the same wny ns in the modern instruments. , The reproduc-
31 tions secured was extremely loud in character, although the
clearness of the reproduction was necessarily limited by rea¬
son of the crudeness of the machine and of, the fact thnt the record¬
ing device wns also usod in effecting the reproduction. So far as I
know, these' blanks which were made by mo in 1896, having a diam¬
eter of 7 inches, wore the largest phonograms which have ever been
made and exhibited. Tho ' mold in which these blanks were made
is still-in my possession.
After the Standard phonographs were brought out by me in 1889,
a public demand arose for musical records, and at tho present time
the phonographs are used almost entiroly for this purpose; With
standard blanks operated at a shuft speed of about 120 turns per
minute, I found that a record groove of sufficient length was secured
to ouuble ordinary musical compositions to bo recorded, and when
tlie reproduction was hoard through listening tubes it ivns entiroly
.satisfactory; Tlie demand of the public has, however, during recent
years, been towards the production-of a phonograph for exhibition
purposes wherein the reproductions of intricate musical composi¬
tions would bo heard through a horn, mid to this end, therefore, it
became necessury to make a phonograph which, while having a suf¬
ficiently higlfsurfuco speed, would have n record groove long enough
for ‘an . ordinary musical composition. I; therefore, determined to
go back' to' my original - experiments with the tinfoil phonograph,
and to mnke a phonograph having, a' sufficiently large blank ns to .
securo a high surface speed.- At the present time, tho National Pho¬
nograph Company, in which 1 am interested,' is making and selling
machines called tlie “ Concert phonographs,” using a soap blank of 6
3— 1257a ' ......
18 TJIE U. 8. Of AMERICA ON K
AT. WIONOOlUMt
nclies in din motor, 4.25 mdios in longth, with a pitch of 100
32 'r, S por mcl'.- .operated at a shaft spood offrom 100 to
120 turns per minulo. With tlioso machines, a surface snood
ranging from 1570.8 to 1884.90 inches por minuto is attained P At
a shaft speed of 100 turns nor minuto, the surfaco spood of llio’Con-
n tJnn0.>!0Emr1' b !"lk 13 *ess 11,11,1 llml of 11,0 blank usod by mo on
whih,00; ion1. m"cl"110 !“ 1895, a,,<1 ,Iuriufi tlio succoo cling years,
" lino at 120 turns por minuto, tlio surfaco spood is inoro Bv roa’
““ °(.the ll,f?h sul'f|lce-spood and of tlio character or tlio blank and
loeoidmg and reproducing dovices, tlio reproduction obtained with
the Concert phonograph fs very loud and' clear. Those ranch?, u»
witii^hom.6’ "dU| ed f°r Oxlubltlon Purposes, in reproducing rauste
I hnro known since 1877 that the loudness and clearness of tl.o
10 toduction doponds upon tlio surface spood of tlio blank oth'or
conditions of construction and operation being tlio same, nnd when
tlio surfaco spood ofono blank oxceods that of another it mnv bo
fnrmln°d’ nt I01 lCOnd,tl?“3 boi,’S e<1Uft1' l,Wt 1,10 reproduction of tho
former will bo bettor than that of tho luttor. I havo demonstrated ’
t hmuf °tp0r?it"'r'a &ln!Kl“r<1 Phonograph at a surfaco spood higher
than that of the Concert phonograph, in which enso tho reproduction
raSeSac . . . - ssss
soiry"^,!10':^ ““t1 my C0'nP<»t'lws in business are
speed oflOO to 120 turns por minuto, whereby a ^ln?ghor surface snood
'“““simftrood1 IuSthisdal-d 1)h0“-grnpb °J?or“,od “t «io same
snnit spoeu. in this way, an increase in the surface snend
ductira,8eT ara’ni11/ tC0I,SeqU<ml 1°!1<ler “,ld “ roprt
IfiS $oi?T
in the 400-thread machine, where a blank of 2 75 inohiJ
>. VS. FREDERICK I.
inches por minuto in tlio mailing machine, up to 2748.9 in tho tin¬
foil machine, witli tinfoil records nnd soap records, I do not see
upon what theory a patent can bo grnntod covering the operation of
a. blank at a speed intermediate of those extremes. Furthermore,
since Standard phonographs have been made and sold sinco 1889
with records capable of operation at widely different surface speeds,
I do not believe that a patent should now be granted on a
34 blank operated at a surfaco speed of which tho standard mu-
■ chine is capable. Finally, sinco I lmvo operated tho 400-
thread machine in tho presence of many visitors to ray laboratory
at a surface speed of 1727.88 inches per minute, I do not boliovo that
a patent should now bo granted upon a phonograph wherein the
blank is operated at a surfaco speed of only 1884.90 inches per
minute, an increaso of but a slight oxtont, assuming tho blank for
winch a patent is being sought to lmvo n diameter of 0 inches, a
length of 4l25 inches and a pitch of 100 threads per inch.
In order -that a clear comprehension of this subject may bo secured,
I havo prepared a table, which I attach hereto, giving tho diameter,
the longth, the pitch, tho shaft speed, the surfaco speed and the
longth of tho record groove in the eight types of phonographs or
gruphophoncs to which I have referred herein, arranged lii the
order of tlio diamotor of tho blanks. From this table, it will be ob¬
served that the surfaco speed of tho large-blank inuchino for which
a patent is sought is slightly greater than that of the 400-thread
machine, which in turn is slightly greater than that of tho Concert
phonograph operated at 120 turns por minuto, while tho longth of
tlio record groove of the largo-blank machine (which factor deter¬
mines the quantity of the record composition) is about 20% more
than that of the Concert phonograph, but greatly below that of tho
400-thread machino.
. So far as I can dotorinino, tlio phonograph for which a patent is
being sought makes uso of tlio ordinary soap blanks, which have
been used on tho Standard phonographs sinco 1889, wliilo an
35 increase in tho surfuco spood is socurod in tlio samo way as
in tlio old tinfoil machines, by using a blank of a lurgo diam¬
otor.
THOMAS A. EDISON.
Subscribed and sworn to boforo mo this 15th day of April, 1899.
J. F. RANDOLPH, /
Notary Public for New Jersey.
8. 01.’ AMERICA ON
r. rnoNooRAPit
47 2nd Affidavit of Thomas A. Edison.
In tlio United States Patent Office.
In the Matter of the Application of tlio Nationnl Phonograph Com¬
pany of Orango, Now Jorsey, Requesting tlio Institution of Public-
uso Proceedings. On Petition.
Thomas A. Edison, being duly sworn, on oath doth doposo and
say as follows : . ... •
I liavo already inadoan affidavit in this caso relating to my work
ill tlio phonographic art, which affidavit was signed and oxccutcd
April 15, 189‘J.
Tlio 400-thread machine which I refer to in my first affidavit and
which was inado in 1895, was publicly exhibited in my laboratory
in 1895 mid during tlio succeeding yoars. Tho reproductions of
musical records on that machine have boon listened to by a largo
number of visitors to my laboratory in the year 1895 and during
the succeeding years. Tho machine is still in my possession and in
practically daily use, and many visitors to my laboratory at the
Pinout tuno are permitted to witness its operation and to listen to
its reproductions. I boliovo that if this machine worosontto Wash¬
ington at the presont timo for inspection by tho examiner, and woro
then returned by linn for uso in tlio taking of testimony should tho
request for the institution of those proceedings bo gnintod,
48 there would bo dangor of tho machine becoming damaged in
. transportation. b
THOMAS A. EDISON.
Sworn to and subscribed boforo mo this oighth day of May 1899
, r , J. F. RANDOLPH,
L8EAt’J Notary Public for New Jersey.
Legal Department Records
Phonograph - Case Files
Price Maintenance Cases
This folder contains a volume entitled Litigation in Enforcement of
System Under Which Edison Phonographs and Records Are Sold,
published by Thomas A. Edison, Inc., in April 1911. Included are printed
copies of injunctions and decrees arising from price maintenance suits
brought against sales agents of the National Phonograph Co. and other
parties engaged in cutting prices of Edison products. Only the index,
introduction, and six lists of cases have been selected. Documents
pertaining to most of the listed cases can be found in the archival record
group, Legal Services Department and Retained Firms.
Thomas A. Edison, Incorporated,
SUCCESSOR TO
National Phonograph Company,
ORANGE, NEW JERSEY.
LITIGATION IN ENFORCEMENT
OF SYSTEM UNDER. WHICH EDISON
PHONOGRAPHS AND RECORDS
ARE SOLD.
FRANK L. DYER,
DELOS HOLDEN,
Counsel.
HERBERT H. DYKE,
Counsel in Charge of Litigation in Enforcement
of Selling System.
ORANGE, N. J., APRIL, 1011.
INDEX.
The Selling System . . . . * " -
Edison Standard Record Label . Pacing page 6
Edison Ambcrol Record Label _ ...... .Pacing page 7
Suits in which Defendants have been Licensed
Dealers or Jobbers . . 7-1G3
Suits in which Defendants were not Licensed
Dealers or Jobbers . 165-323
Cases in which Trustees in Bankruptcy, Re¬
ceivers in Insolvency Courts, Sheriffs, Auc¬
tioneers, and similar officers have been in-
volved . . 323-37.1
Cases involving the Cut-price Sale of Edison
Records at Second-hand. . . 873-433
435-460
Contempt of Court .
Cases in Foreign Countries.
461-479
THE SELLING SYSTEM.
The name of the corporation selling Edison Phono¬
graphs, Edison Records, and Supplies, up to February
28, 1011, was National Phonograph Company. On that
date its name was changed to THOMAS A. EDISON,
INCORPORATED. While for convenience the style
“Thomas A. Edison, Incorporated, successor to National
Phonograph Company,” has been adopted, the identity of
the corporation has been preserved, and is not affected by
this change of name.*
The system under which Edison Phonographs, Edison
Records, and Supplies, manufactured at Orange, N. J.,
under numerous patents, were sold up to and including
February 28, 1911, by the National Phonograph Com¬
pany, and since that time by the same corporation under
its new name, “Thomas A. Edison, Incorporated,” com¬
prises two principal features, namely:
1. The license agreements required to be made by
each jobber and dealer before permission is given to deal
in the patented goods. These license agreements set
forth at length the conditions under which the goods are
licensed to be dealt in. They have been modified some¬
what from time to time, particularly in form and typo¬
graphical arrangement, but. the principal requirements,
namely : that the goods are not licensed to be sold at less
than list prices, and that the violation of these restric-
' '6 Sri THE SEtMNG SYSTEM I {, :>*
■-,‘Vl if '
tiojis will amount to infringement of the patents under
; which the goods are manufactured, have [been embodied-
’{ therein from the time when the system' was first put
into effect, in the year 1900. . -
2. Restrictive notices have been placed; upon the
'goods themselves; in the case of Edison- Records these
restrictive notices have been , placed upon labels pasted
;• tortile pasteboard cartons in which the records are put
■ out. On the accompanying plate are reproduced an Edi-
■ son Standard or Two-Minute : Record Label, and an Edi¬
son kniberal or 'Fonr-iriiuite Record Label. '
i j - - ' .
■ This; system^s- rigorously enforced. [The Opinions,
br!ders,^pcCMe8jllnjunctidns; etc.,', reproduced in this
volume areTtaken from suits brought in; , the Federal
Courts; a^auistj parties guilty, -of- violations; of the pro-
v visionsof 'tfeseiling^system outlined above.' -.1
nm'
fi^=
SUITS IN WHICH DEFENDANTS WERE NOT
LICENSED JOBBERS OR DEALERS.
The cases treated in the following pages are suits which
have been brought against unlicensed defendants.
As is naturally to be expected in a business where li¬
censed jobbers and dealers are protected by a uniform
system of prices, assuring to them a margin of profit which
will make the business an attractive and profitable one
to be legitimately pursued, there have been a number of
pirates who have engaged in this business without hav¬
ing made the required license agreements, and in disre¬
gard and defiance of the restrictions upon the sale of the
patented goods. Wherever this practice is persisted in
suit is promptly brought.
It is sometimes supposed by unlicensed dealers and even
by lawyers unfamiliar with litigation of this character that
suits cannot be successfully prosecuted against parties
who have not entered into contracts with the manufac¬
turers of Edison Phonographs and Records, to sell at list
prices. Such views are entirely wrong. The reader of
the following pages will observe that an unlicensed dealer
is subject to suit and injunction whenever he deals in the
patented goods without a license. Cutting of prices, of
course, gives an additional ground of action against an
unlicensed dealer, but he can be sued and enjoined wheth¬
er he cuts prices or not.
CASES IN WHICH TRUSTEES IN BANKRUPTCY,
RECEIVERS IN INSOLVENCY COURTS,
SHERIFFS, AUCTIONEERS, AND SIMILAR
OFFICERS HAVE BEEN INVOLVED.
It is a well established rule of law that when Trustees
in Bankruptcy, Receivers in Insolvency Courts, Sheriffs
in execution suits, Auctioneers, and the like, obtain pat¬
ented goods which are subject to restrictions in the hands
of the parties from whom they were obtained, the re¬
strictions follow the goods in their hands, and that they
obtain no better title thereto than that held by their
principals. Following out this rule of law, the Federal
Courts have granted numerous injunctions against such
defendants restraining the violation of the restrictions im¬
posed upon the sale of Edison goods. In the cases re¬
ported in the following pages, the defendants have been
of one or another of the classes above named.
CASES INVOLVING THE CUT-PRICE SALE OF
EDISON RECORDS AT SECOND-HAND.
The restrictions applied to Edison Records, namely:
that they are not licensed to be sold by the original or
any subsequent purchaser (except by an authorized job¬
ber to an authorized retail dealer) for less than the list
prices, applies to the records at all times whether they
be new or second-hand, as any party selling them at cut
prices must be either the original or a subsequent pur¬
chaser. The defense that the records trafficked in were
second-hand goods has been advanced in a number of
cases, orders and) decrees in some of them being here¬
after reproduced.
In the case against Prikovitz, in the Southern District
of New York, the defense put forth by the defendant was
that his goods were second-hand, but notwithstanding
this supposed defense, the injunction was granted by his
Honor, Judge Holt.
In the case against Fredericks, in Brooklyn, New York,
the defense was that the goods (were second-hand, and
the perusal of the Injunction Order in that case will show
clearly the views of His Honor, Judge Chatfield, upon the
subject. Dixon and Morchenross were also dealers in
second-hand Edison Records.
The mistaken idea is frequently entertained (partic¬
ularly in the City of New York) that the possession of a
City license to trade as a second-hand dealer entitles such
OASES INVOLVING THE CUT-PRICE SALE OE
EDISON RECORDS AT SECOND-HAND.
Charles Fredericks ..
Phonograph Co. vi
Phonograph Co. vj
Phonograph Co. <vi
Phonograph Co. a-.
Phonograph Co. <v
399-407
409-413
John Morchcnross, doing business as German Record Exchange 425-433
■ttoiteh States (Etmrit (Cmul
Northern District op Iowa,
Central Division.
New Jersey Patent Company and
National Phonograph Company,
Complainants, j
Edward H. Martin, Fred N. Mar¬
tin, M. M. Martin, Martin Tele¬
phone Company and E. L. Ster-
In Equity on
U. S. Letters
Patent No.
782,375.
RESTRAINING ORDER.
PRELIMINARY INJUNCTION.
MEMORANDUM ON DEMURRER TO BILL OF
COMPLAINT.
FINAL DECREE.
OPINION IN CONTEMPT MATTER
ORDER OF PUNISHMENT FOR CONTEMPT
Kelleher & O’Connor,
Frank L. Dyer,
Herbert H. Dyke,
For Complainants.
Wesley Martin.
For Defendants.
PUBLICATION AND MICROFILM
COPYING RESTRICTIONS
Reel duplication of the whole or of
any part of this film is prohibited
In lieu of transcripts, however,
enlarged photocopies of selected
items contained on these reels
may be made in order to facilitate
research.
A Note on the Sources
The pages which have been
filmed are the best copies
available. Every technical
effort possible has been
made to ensure legibility.
225
FINANCIAL CONTRIBUTORS
PRIVATE FOUNDATIONS
Tlie Alfred P. Sloan Foundation
Charles Edison Fund
The Hyde and Watson Foundation
National Trust for the Humanities
Geraldine R. Dodge Foundation
PUBLIC FOUNDATIONS
National Science Foundation
National Endowment for the
Humanities
National Historical Publications and
Records Commission
PRIVATE CORPORATIONS AND INDIVIDUALS
Alabama Power Company
Anonymous
AT&T
Atlantic Electric
Association of Edison Illundnating
Companies
Battelle Memorial Institute
The Boston Edison Foundation
Cabot Corporation Foundation, Inc.
Carolina Power & Light Company
Consolidated Edison Company of New
York, Inc.
Consumers Power Company
Cooper Industries
Corning Incorporated
Duke Power Company
Entergy Corporation (Middle South
Electric System)
Exxon Corporation
Florida Power & Light Company
General Electric Foundation
Gould Inc. Foundation
Gulf States Utilities Company
David and Nina Heitz
Hess Foundation, Inc.
Idaho Power Company
IMO Industries
International Brotherhood of Electrical
Workers
Mr. and Mrs. Stanley H. Katz
Matsushita Electric Industrial Co., Ltd.
Midwest Resources, Inc.
Minnesota Power
New Jersey Bell
New York State Electric & Gas
Corporation
North American Philips Corporation
Phiiodelplua Electric Company
Philips Lighting B.V.
Public Service Electric and Gas Company
RCA Corporation
Robert Bosch GmbH
Rochester Gas and Electric Corporation
San Diego Gas and Electric
Savammh Electric and Power Company
Schering-Plough Foundation
Texas Utilities Company
Thomas & Betts Corporation
Thomson Grand Public
Transamerica Delava] Inc.
Westinghouse Foundation
Wisconsin Public Service Corporation
BOARD OF SPONSORS
Rutgers, The State University of New National Park Service
Jersey
Francis L. Lawrence
Joseph J. Seneca
Richard F. Foley
David M. Osliinsky
New Jersey Historical Commission
Howard L. Green
John Maounis
Maryanne Gerbauckas
Roger Durham
George Tselos
Smithsonian Institution
Bernard Finn
Arthur P. Molella
EDITORIAL ADVISORY BOARD
James Brittain, Georgia Institute of Technology
R. Frank Colson, University of Southampton
Louis Galambos, Johns Hopkins University
Susan Hockey, University of Alberta
Thomas Parke Hughes, University of Pennsylvania
Peter Robinson, Oxford University
Philip Scranton, Georgia Institute of Technology/Hagley Museum and Library
Merritt Roe Smith, Massachusetts Institute of Teclmology
THOMAS A. EDISON PAPERS
Robert A. Rosenberg
Director and Editor
Thomas E. Jeffrey
Associate Director and Coeditor
Paul B. Israel
Managing Editor, Book Edition
Helen Endick
Assistant Director for Administration
Associate Editors
Theresa M. Collins
Lisa Gitelman
Keith A. Nier
Research Associates
Gregory Jankunis
Lorie Stock
Assistant Editors
Louis Cariat
Aldo E. Salerno
Secretary
Grace Kurkowski
Student Assistants
Amy Cohen Jessica Rosenberg
Bethany Jankunis Stacey Saelg
Laura Konrad Wojtek Szymkowiak
Vishal Nayak Matthew Wosniak
Thomas A. Edison Papers
at
Rutgers, The State University
endorsed by
National Historical Publications and Records Commission
18 June 1981
Copyright © 1999 by Rutgers, The State University • ■
All rights reserved. No part of this publication including any portion of the guide and index or of
the microfilm may be reproduced, stored hi a retrieval system, or transmitted hi any form by any
means— graphic, electronic, mechanical, or chemical, incliidhigphotocopying, recordingor taping,
or information storage and retrieval systems—' without written permission of Rutgers, The State
University, New Brunswick, New Jersey.
The original documents hi this edition ure from the archives at the Edison National Historic Site
at West Orange, New Jersey.
Cl £dU>oru1^i
ape**
A SELECTIVE MICROFILM EDITION
PART IV
(1899-1910)
Thomas E. Jeffrey
Lisa Gitelman
Gregory Jankunis
David W. Hutchings
Leslie Fields
Editors
Theresa M. Collins
Gregory Field
Aldo E. Salerno
Karen A. Detig
Lorie Stock
Robert Rosenberg
Director and Editor
Sponsors
Rutgers, The State University Of New Jersey
National Park Service, Edison National Historic Site
New Jersey Historical Commission
Smithsonian Institution
University Publications of America
Bethesda, MD
1999
Edison signature used \vllli permission of McGraw-Edlson Company
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